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DENNIS  & 

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Law  Book 

Publishers 

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STREET 

BUFFALO 

3,  N 

Y 

UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


/ 


THE   LAW 


OF 


TRADEMARKS,    TRADENAMES 


AND 


UNFAIR  COMPETITION 


INCLUDING 


TRADE  SECRETS;  GOODWILL;  THE  FEDERAL  TRADE- 
MARK ACTS  OF  1870,  1881  AND  1905;  THE  TRADE- 
MARK REGISTRATION  ACTS  OF  THE  STATES 
AND  TERRITORIES;  AND  THE  CANADIAN 
TRADEMARK  AND  DESIGN  ACT;  WITH 
FORMS. 


BY 


JAMES  LOVE  HOPKINS 


SECOND     EDITION 


CHICAGO 

CALLAGHAN  AND  COMPANY 

1905 


COPYBIQHT     1905 
BY 

CALLAGHAN  &  COMPANY 

T 

M.   H.  VKSTAIi 

BOOK   COMPOSITION 

CHICAQO 


pit: 


AUTHOR'S    NOTE. 


Froude,  in  his  essay  on  the  Science  of  History,  said, 
"Opinions  alter,  manners  change,  creeds  rise  and  fall, 
but  the  moral  law  is  written  on  the  tablets  of  eternity." 
In  the  law  of  trademarks  is  contained  the  first  recog- 
nition by  the  courts  of  the  principle  that  no  man  should 
be  permitted  to  pass  off  his  goods  as  those  of  another. 
Does  the  fact  that  this  department  of  our  law  is  of  so  re- 
cent origin  import  that,  in  the  past,  English  speaking 
traders  were  more  honest  in  their  dealings  1  The  answer 
to  that  question  must  be  looked  for  in  the  pages  of  his- 
tory. Even  if  Napoleon  was  correct  in  his  assertion  that 
history  was  ''but  a  fiction  agreed  upon,"  it  contains  the 
only  evidence  available  for  our  purpose.  Furthermore, 
Buckle's  theor}^  that  history,  though  conflicting  as  to  the 
character  and  achievements  of  individuals,  is  still  har- 
monious as  to  the  manners  of  a  given  period,  leads  us  to 
believe  that  the  authors  to  whom  we  purpose  to  briefly 
refer  may,  for  the  purpose  of  our  inquiry,  be  deemed 
authoritative. 

Writing  of  the  conditions  existing  in  England  during 
the  Anglo-Saxon  period,  JIume  says  "Wliatever  we  may 
imagine  concerning  the  usual  truth  and  sincerity  of  men 
who"  live  in  a  rude  and  barbarous  state,  there  is  much 
more  falsehood,  and  even  perjury  among  them,  than 
among  c'ivilized  nations;  virtue,  which  is  nothing  but  a 
more  enlarged  and  more  cultivated  reason,  never  flour- 
ishes to  any  degree,  nor  is  founded  on  steady  principles 
of  honour,  except  where  a  good  education  becomes  gen- 
eral; and  where  men  are  taught  the  pernicious  conse- 
quences of  vice,  treachery,  and  immorality.  Even  super- 


lU 


f\ 


iv  author's  note. 

stition,  though  more  prevalent  among  ignorant  nations, 
is  but  a  poor  supply  for  the  defects  in  knowledge  and 
education;  our  European  ancestors,  who  employed  every 
moment  the  expedient  of  swearing  on  extraordinary 
crosses,  and  relics,  were  less  honourable  in  all  engage- 
ments than  their  posterity,  who,  from  experience,  have 
omitted  those  ineffectual  securities.  This  general  prone- 
ness  to  perjury  was  much  increased  by  the  usual  want 
of  discernment  in  judges,  who  could  not  discuss  an  intri- 
cate evidence,  and  were  obliged  to  number,  not  weigh, 
the  testimony  of  the  witnesses." 

Daniel  De  Foe  (whom  Taine  describes  as  *'one  of  those 
indefatigable  labourers  and  obstinate  combatants,  who, 
ill-treated,  caluminated,  imprisoned,  succeeded  by  their 
uprightness,  common  sense,  and  energy  in  gaining  Eng- 
land over  to  their  side")  published  in  1725  and  1727  his 
book,  ''The  Complete  English  Tradesman,"  in  which  he 
treats  of  the  ethics  of  English  trade.  In  that  work  he 
refers  to  the  "shop  rhetorick"  and  "flux  of  falsehoods" 
used  by  tradesmen  in  disposing  of  their  wares,  and  the 
common  practice  of  keeping  on  hand  a  bag  of  spurious 
or  debased  coin  from  which  to  make  change.  Charles 
Lamb  said  this  work  was  "of  a  vile  and  debasing  ten- 
dency." The  French  critic  is  probably  the  better  judge 
of  De  Foe> 

In  1859  Herbert  Spencer  in  his  essay  on  "The  Morals 
of  Trade,"  treats  of  the  ethics  of  the  same  tradesmen 
more  than  a  century  later.  He  refers  to  "the  often-told 
tale  of  adulterations,"  and  says  "It  is  not  true,  as  many 
suppose,  that  only  the  lower  classes  of  the  commercial 
world  are  guilty  of  fraudulent  dealing.  Those  above 
them  are  a  great  extent  blameworthy.  On  the  average, 
men  who  deal  in  bales  and  tons  differ  but  little  in  moral- 
ity from  men  who  deal  in  yards  and  pounds.  Illicit  prac- 
tices of  every  form  and  shade,  from  venial  deception  up 
to  all  but  direct  theft,  may  be  brought  home  to  the  higher 


AUTUOR  S   NOTE. 


grades  of  our  commercial  world.  Tricks  Innumerable, 
lies  acted  or  uttered,  elaborately-devised  frauds,  are 
prevalent;  many  of  them  established  as  'customs  of  the 
trade';  nay,  not  only  established,  but  defended.  *  *  * 
We  cannot  here  enlarge  on  the  not  uncommon  trick  of 
using  false  trademarks,  or  of  imitating  another  maker's 
wrappers.  *  *  *  Omitting  the  highest  mercantile 
classes,  a  few  of  the  less  common  trades,  and  those  ex- 
ceptional cases  where  an  entire  command  of  the  market 
has  been  obtained,  the  unifonn  testimony  of  competent 
judges  is,  that  success  is  incompatible  with  strict  integ- 
rity. To  live  in  the  commercial  world  it  appears  neces- 
sary to  adopt  its  ethical  code;  neither  exceeding  nor  fall- 
ing short  of  it— neither  being  less  honest  nor  more  hon- 
est. Those  who  sink  below  its  standard  are  expelled; 
'while  those  who  rise  above  it  are  either  pulled  down  to 
it  or  ruined.  As,  in  self-defense,  the  civilized  man  be- 
comes savage  among  savages;  so  it  seems  that  in  self-de- 
fense, the  scrupulous  trader  is  obliged  to  become  as  little 
scrupulous  as  his  competitors.  It  has  been  said  that  the 
law  of  the  animal  creation  is— 'Eat  and  be  eaten';  and  of 
our  trading  community  it  may  similarly  be  said  that  its 
law  is— cheat  and  be  cheated.  A  system  of  keen  compe- 
tition, carried  on,  as  it  is,  without  adequate  moral  re- 
straint, is  very  much  a  system  of  commercial  cannibal- 
ism. Its  alternatives  are— Use  the  same  weapons  as  your 
antagonists  or  be  conquered  and  devoured." 

If  the  statements  of  those  three  writers  are  to  be  ac- 
cepted as  evidence,  and  they  would  seem  to  be  the  best 
evidence,  as  to  the  ethics  of  trade  in  England  at  the  sev- 
eral periods  referred  to,  it  would  appear  that  the  present 
condition  of  trade  as  to  fairness  in  competition  is  far 
more  wholesome.  That  bettered  condition  must  be  at- 
tributed largely  to  the  judicial  evolution  of  the  principles 
treated  in  this  book. 

In  this  conclusion,  the  author  is  supported  by  Sir  Fred- 


vi  author's  note. 

erick  Pollock.  In  his  First  Book  of  Jurisprudence  he 
says,  ^'Eules  of  law  may  well  have,  in  particular  circum- 
stances, an  effective  influence  in  maintaining,  reinforc- 
ing, and  even  elevating  the  standard  of  current  morality. 
The  moral  ideal  present  to  lawgivers  and  judges,  if  it 
does  not  always  come  up  to  the  highest  that  has  been  con- 
ceived, will  at  least  be,  generally  speaking,  above  the 
common  average  of  practice;  it  will  represent  the  stand- 
ard of  the  best  sort  of  citizens.  This  is  especially  the 
case  in  matters  of  good  faith,  whether  we  look  to  com- 
mercial honesty  or  to  relations  of  personal  confidence. 
With  few  exceptions,  the  law  has,  in  such  matters,  been 
constantly  ahead  not  only  of  the  practice  but  of  the  or- 
dinary professions  of  business  men." 

Ethical  evolution  and  organic  evolution  alike  are  ac- 
complished slowly,  and  the  possibilities  of  each  are  alike 
limitless.  From  the  days  when  the  Anglo-Saxon  judges 
numbered  the  witnesses  because  of  inability  to  weigh 
their  testimony,  to  the  era  when  the  requirement  of  fair- 
ness in  trade  was  established,  the  English-speaking  peo- 
ple have  made  immeasurable  ethical  progress.  To  that 
progress,  the  science  of  law  has  made  many  contribu- 
tions, and  has  been  indispensible. 

We  are  dealing  in  the  subjects  comprised  in  this  book 
with  the  highest  ethical  development  of  that  which  we 
term  the  common  law.  The  standard  set  for  the  regula- 
tion of  competition  by  the  modem  decisions  evidences 
the  high  degree  of  ethical  development  of  the  modem 
judiciary.  It  is  not  to  be  expected  that  all  of  the  decis- 
ions should  reach  the  same  altitude  as  the  foremost.  To 
say  this,  is  merely  to  say  that  the  judges  who  wrote  the 
opinions  were  not  of  equal  ability  and  learning.  It  is 
impossible  that  they  should  be.  But  on  the  whole,  the 
body  of  cases  with  which  we  here  deal,  forms  the  most 
convincing  proof  which  we  have  of  the  steady  improve- 
ment of  the  morals  of  trade,  and  the  gradual  extinction 


author's  note.  vu 

of  that  "commercial  cannibalism"  of  vrliicli  Spencer 
wrote  less  than  fifty  years  ago.  It  is  doubtful  whether 
jurisprudence  lias,  during  any  corresponding  period  in 
the  world's  history,  been  of  greater  value  to  the  advance- 
ment of  civilization  than  it  has  in  dealing  with  the  sub- 
jects here  considered,  during  the  past  half  century. 

It  is  a  remarkable  fact  that  in  this  department  of  the 
law  which  has,  less  than  any  other,  been  hampered  by 
statutes  and  precedents,  and  which,  more  than  any  other, 
rests  upon  a  foundation  purely  ethical,  there  should  be 
found  so  great  harmony  between  so  many  independent 
jurisdictions,  English  and  American.  Such  legislation 
as  has  been  effected  in  the  United  States  has  been  desul- 
tory and  comparatively  ineffective.  Its  most  admirable 
quality  is  its  non-interference  with  common-law  trade- 
mark rights. 

In  submitting  this  more  comprehensive  work  to  the 
profession,  it  is  a  subject  of  gratification  to  the  author 
that  his  former  book  entitled  ''The  Law  of  Unfair 
Trade"  has  been  so  generally  accepted,  and  used  as  a 
working  tool.  The  present  work,  it  is  hoped,  will  be 
found  more  adequate.  The  late  cases  have  been  exhaust- 
ively dealt  with.  The  addition  of  the  statutes  and  forms 
for  registration  emploj-ed  in  the  several  states  and  terri- 
tories, and  the  Dominion  of  Canada,  is  intended  to  facil- 
itate the  business  of  the  practitioner,  in  registration  and 
litigation  outside  of  the  state  in  which  he  resides.  The 
forms  of  pleading  have  been  added  to  from  the  best 
sources.  The  recently  enacted  federal  trademark  act, 
together  with  the  rules  and  fonns  prescribed  by  the  Com- 
missioner of  Patents  for  the  registration  of  trademarks 
and  patent  office  practice  under  the  act,  is  reproduced 
in  the  appendix,  while  the  acts  of  1870  and  1881  have 
been  preserved,  with  their  annotations. 

JA]\IES  LOVE  HOPKINS. 

St.  Louis,  October  1st,  1905. 


CONTENTS 


Sec 


CHAPTER  I. 

PREFATORY. 

Page. 

1.  The  need  of  legal  restraint  of  unfair  trade 1 

2.  Trademark  defined  3 

3.  Tradename  defined  "^ 

4.  Earliest  recognition  of  trademarks 12 

5.  The  evolution  of  the  law  of  trademarks 13 

6.  The  relative  protection  given  by  patents  and  trademarks 13 

7.  Trademarks  distinguished  from  patents  and  copyrights 14 

8.  Function  ^^ 

9.  Nature  of  the  right  to  a  trademark 16 

10.  The  test  of  exclusiveness 1"^ 

11.  Requisites  of  a  valid  trademark 18 

12.  Perpetual   existence    18 

13.  Territorial  limitation  19 

14.  The  necessity  of  user 20 

15.  Trademarks  as  subjects  of  sale,  assignment  or  bequest 22 

16.  Assignability  of  distillery  brands  and  the  like 34 

17.  Unfair  competition  35 

18.  Historical   36 

19.  Unfair    competition    distinguished    from    trademark    infringe- 

ment      40 

20.  Trade  slander  and  libel 46 

21.  Are  trademarks  rights  monopolistic  in  character? 49 

22.  Title 51 

23.  Licenses    52 

CHAPTER  II. 

THE  ACQUISITION  OF  A  TRADEMARK. 

24.  Who  may  acquire 55 

25.  User    57 

26.  Affixing  the  mark 58 

27.  Registration  not  a  means  of  acquiring 59 

28.  Acquisition  by  assignment 61 

29.  Acquisition  by  an  alien 62 

30.  Priority  of  appropriation 62 

is. 


X  CONTENTS. 

CHAPTER  III. 

WHAT  CONSTITUTES  A  VALID  TRADEMARK. 

Sec.  Page. 

31.  The  general  rule 66 

32.  It  must  be  truthful 66 

33.  A  dishonest  label  will  invalidate 67 

34.  The  cases  of  false  representation  in   connection   with  trade- 

marks    68 

35.  Manhattan  Medicine  Co.  v.  Wood 71 

36.  The  similar  cases— Assignment  must  be  made  public  in  con- 

junction with  the  trademark,  when 71 

37.  Unauthorized  use  of  words  "patent"  or  "patented" 72 

38.  Use  of  such  word  or  a  trademark  where  there  has  been  a 

patent     74 

39.  Names  of  patented  articles 78 

40.  Generic  term,  defined 83 

41.  Illustrations  of  generic  terms 87 

42.  Examples  of  valid  trademarks,  fancy,  arbitrary  or  distinctive 

words    96 

43.  Generic  terms  judicially  defined 105 

44.  The  name  given  an  unpatented  invention  by  the  inventor 108 

45.  Necessary  name  of  product 108 

46.  Marks  common  to  the  trade Ill 

47.  The  trademarked  article  not  a  trademark 112 

48.  Packages  as  trademarks 112 

49.  Method  of  arranging  goods  as  trademarks 113 

50.  Words  taken  from  the  dead  languages 114 

51.  Words  and  phrases  from  modern  foreign  languages 115 

52.  Words  become  generic  through  use 120 

53.  The  use  of  generic  names  protected 121 

54.  The  test  of  "origin  or  ownership" 126 

55.  Geographical  names    128 

56.  As  employed  by  sole  owner  of  a  natural  product  and  its  place 

of  production   129 

57.  When  geographical  names  will  be  protected  as  trademarks. .  .129 

58.  Geographical  names — The  underlying  principle 131 

59.  A  false  geographical  name  vitiates  trademark 135 

60.  The  right  to  complain  of  unfair  use  of  geographical  name 136 

61.  When   relief  will  be    granted  against  fraudulent  use  of  geo- 

graphical names 136 

62.  Proper  names  as  trademark 137 

63.  Names  of  celebrities 139 

64.  In  general,  of  one's  own  name 139 

65.  The  use  of  proper  names  in  trade 141 

66.  The  use  of  proper  names  generally 142 

67.  Fictitious   proper   namop 148 


CONTENTS.  Xi 

Sec.  Page. 

68.  Revocation  of  license  to  use  one's  own  name 149 

69.  Corporate  names  150 

70.  "Secondary  meaning"  defined 156 

71.  Words  of  double  meaning 159 

CHAPTER  IV. 

TRADEMARK  RIGHTS  IN  TITLES  OF  BOOKS  AND  PERIODICALS. 

72.  Trademark  in  title  of  a  book 162 

73.  Trademark  in  title  of  periodical 164 

74.  Play  titles  as  trademarks 169 

CHAPTER  V. 
THE  LOSS  OF  THE  RIGHT  TO  A  TRADEMARK'S  USE. 

75.  Laches  172 

76.  Laches  and  acquiescence  distinguished 174 

77.  Acquiescence  175 

78.  Abandonment   176 

CHAPTER  VI. 
GOODWILL. 

79.  Defined    185 

80.  In   particular   cases Ig7 

81.  As  a  subject  of  sale 191 

82.  Goodwill  subject  to  proceedings  in  eminent  domain 195 

83.  Goodwill  in  its  relation  to  firm  and  other  names 196 

84.  Rights  of  vendor 197 

85.  Covenants  not  to  re-engage  in  business 199 

86.  The  valuation  of  goodwill 204 

87.  Competition  between  vendor  and  vendee 206 

88.  Partnership  goodwill  210 

89.  Remedies    212 

CHAPTER  VII. 

TRADE  SECRETS;   RIGHT  OF  PRIVACY. 

90.  Introductory    219 

91.  Where  equity  will  not  interfere 220 

92.  Protection   in  equity 221 

93.  The   right   of  privacy 231 


ill  CONTENTS. 

CHAPTER  VIII. 

INFRINGEMENT. 

Sec.  Page. 

94.  Of  infringement  generally 242 

95.  No  trademark  in  form,  size,  material  or  color 243 

96.  The    early   adjudications 245 

97.  Infringement    of    color 247 

98.  Infringement  of  size  and   form 250 

99.  Intent  and  scienter 255 

100.  What  persons  liable 257 

101.  Of   labels,    generally 258 

102.  The  engraver  or  manufacturer  of  the  label 259 

103.  Of  counterfeiting  trademarks 260 

104.  Of  imitation  of  trademarks 261 

105.  Colorable  imitation   261 

106.  The  test   of  probability  of  deception 262 

107.  The  degree  of  resemblance  which  constitutes  infringement 263 

108.  The  degree  of  care  expected  of  the  purchaser 264 

109.  Infringement  must  be  by  use  on  same  class  of  goods 268 

110.  The  value  of  proof  of  fraudulent  intent 271 

111.  The  manner  of  establishing  fraudulent  intent 272 

112.  Infringing  by  refilling  trademarked  packages 273 

113.  Infringement   by    refitting    and    reselling   worn    trademarked 

articles  274 

114.  Infringement    by    applying    a    manufacturer's    trademark    to 

goods  of  his  to  which  he  does  not  intend  its  application 275 

115.  Substitution  276 

116.  The  use  of  misleading  signs  and  circulars  enjoined 277 

117.  Infringement  by  a  dissimilar  word  or  mark 280 

118.  Patent    oflBce    rulings    on    similarity    of    alleged    conflicting 

marks  292 

119.  Miscellaneous  matters  relating  to  infringement 293 

120.  The  use  of  letters  and  numerals 295 

121.  The  judicial  test  of  infringement 299 

122.  Restraint  of  use  of  misleading  advertisements,  and  the  like... 303 

123.  Infringement  in  another  jurisdiction 304 

124.  Trademarks  of  variable  sound  and  pronunciation 304 

125.  The  effect  of  a  plurality  of  marks  for  a  single  article 306 

126.  Confusion  of  mail  matter  as  test  of  the  right  to  Injunction 308 

127.  Hotel  names  and  rights  created  thereby 310 

CHAPTER  IX. 
REGISTRATION. 

128.  Introductory    313 

129.  The  valid  registration  acts 313 


CONTENTS.  xiii 

Sec.  Page. 

130.  The  power  of  congress  to  protect  trademarks 314 

131.  The  constitutionality  of  the  present  registration  act 315 

132.  The  advantages  of  registration 320 

133.  The  disadvantages  of  registration 322 

134.  Interferences  324 

135.  Between  a  registrant  and  an  applicant 324 

136.  The  preliminary   statement 325 

137.  The  issues  in  an  interference 326 

CHAPTER  X. 
COURTS,  PARTIEJS  AND  CAUSES. 

138.  Introductory    327 

139.  Jurisdiction  of  United  States  circuit  courts 327 

140.  Jurisdiction  of  the  state  courts 331 

141.  The  elements  whereon  jurisdiction  must  be  predicated 332 

142.  The  parties  plaintiff 334 

143.  The   parties  defendant 336 

144.  Forms  of  action 340 

CHAPTER  XI. 
THE  CRIMINAL  PROSECUTION— FEDERAL  AND  STATE. 

145.  The  act  of  1876 341 

146.  Section  3449,  Revised  Statutes 343 

147.  Criminal  liability  at  common  law 344 

148.  The  penal  statutes  of  the  several  states 345 

CHAPTER  XII. 

ACTIONS  AT  LAW. 

149.  The  form  of  action 347 

150.  The  declaration   349 

151.  Defenses    353 

152.  Damages  355 

CHAPTER  XIII. 

THE  ACTION  IN  EQUITY. 

153.  The  basis  of  equitable  jurisdiction 361 

154.  The  bill  in  equity 364 

155.  The  defenses  in  equity 368 

156.  The   relief  in  equity 379 

157.  Punitive  damages  in  equity 384 

158.  Increase  of  damages  in  equity 385 


xiv  CONTENTS. 

Sec.  Page. 

159.  The  defendant's  credits  upon  accounting 385 

160.  Label  designing  as  a  judicial  function 386 

161.  Appeals   388 

162.  Certiorari    389 

CHAPTER  XIV. 

MATTER  OF  PRACTICE  AND  EVIDENCE. 

163.  Matter  of  which  courts  will  take  judicial  notice 391 

164.  Expert  and  other  evidence  on  the  question  of  infringement. .  .391 

165.  Exhibits    394 

166.  Discovery    395 

167.  Evidence  of  recognition  by  others  of  plaintiff's  right  to  the 

mark  396 

168.  Contempts    397 

169.  Affidavits    400 

CHAPTER  XV. 

COSTS. 

170.  Generally    402 

171.  Avoiding  costs  by  submission 402 

172.  Submission  to  avoid  costs  must  be  complete 404 

173.  Costs  refused  successful  defendant 404 

174.  Miscellaneous   matters    405 

CONTENTS  OF  APPENDIX. 

A.  Trademark  Act  of  July  8,  1870.     Annotated 411 

B.  Label   Registration  Act  of  June   18,  1874.     Annotated.     Patent 

Office  Rules,  and  Forms  relative  thereto 424 

C.  Trademark  Act  of  August  14,  1876.     Annotated. 442 

D.  Trademark  Act  of  March  3,  1881.     Annotated 446 

E.  Trademark  Act  of  August  5,  1882 463 

F.  Trademark  Provision  of  the  Tariff  Act  of  1897.     Annotated 466 

G.  Trademark    Act    of    February    20,    1905.      Annotated.      Patent 

Office  Rules,  and  forms  relative  thereto 468 

H.     Trademark  Statutes  of  the  States  and  Territories.     Annotated. 

With  forms  for  Registration  Applications 515 

I.       Canadian  Trademark  and  Design  Act,  with  Rules  and  Forms... 729 

J.      Bills  of  Complaint  and  Answers  Judicially  Approved 746 

Declaration  in  Warner  v.  Roehr,  Fed.  Case  No.  17189A 746 

Bill  of  Complaint  in  Taylor  v.  Carpenter,  3  Story,  458 749 

Bill  of  Complaint  in  Carson  v.  Ury,  39  Fed.  Rep.  777 755 

Bill  of  Complaint  in  McLean  v.  Fleming,  96  U.  S.  245 760 


CONTENTS.  XV 

Page. 
Bill  Of  Complaint  in   Richmond  Nervine  Co.  v.  Richmond, 

159  U.  S.  293 '^67 

Bill  of  Complaint  in  Saxlehner  v.  Eisner  &  Mendelson  Co., 

179  U.  S.  19 '^'^2 

Bill  of  Complaint  in  Hennessy  v.  Herrmann,  89  Fed.  Rep. 

669   "^^^ 

Answer  in  Benkert  v.  Feder,  34  Fed.  Rep.  534 781 

Answer  in  Brown  Chemical  Co.  v.  Meyer,  139  U.  S.  540 784 

K.     Forms  of  Injunction — Interlocutory  and  Final  Decrees 789 

Interlocutory  Decree,  Benkert  v.  Feder,  34  Fed.  Rep.  534... 789 

Writ  of  Injunction,  Boord  &  Son  v.  E.  G.  Lyons  Co 791 

Final  Decree,  Royal  Baking  Powder  Co.  v.  Royal  Chemical 

Co.,  Price  &  Steuart,   1 792 

Injunction,  Gillis  v.  Hall,   2  Brewst.  342 792 

Injunction,  Colton  v.  Thomas,  2  Brewst.  308 793 

Injunction,  Gillott  v.  Esterbrook,  47  Barb.  455 793 

Injunction,  Jurgensen  v.  Alexander,  24  How.  Pr.  269 793 

Injunction,  Coffeen  v.  Brunton,  4  McLean,  516 793 

Mandate    of   Circuit   Court  of   Appeals,   Feder    v.   Benkert, 

76  Fed.  Rep.  613 794 

L.     Classification  of  Registered  Trademarks 795 

M.    American   and   English   Bibliography 797 

N.     International  Convention  of  March  20,  1883 798 

O.     Trademark   Provision   of  an    Act  Incorporating  the   American 

National  Red   Cross 805 

P.     Trademark  Laws  of  Foreign  Nations 806 

Q.     Trademark  Treaties  of  Foreign  Nations 807 

Index     809 


^^^;;J^,-j:C^^  Hru^^  v^i^Y^^ 


TABLE   OF   CASES 


References   are  to  pages. 


A.  Bauer    &  Co.    v.  Distillerie    de 

la  Liqueur  Benedictine   (56  C. 

C.   A.   480),   88,   97. 
V.    Order   of    Carthusian    MonliS 

(56  C.   C.  A.   484),   283. 
V.  Siegert  (56  0.  C.  A.  487),  88. 
Abbott  V.  Bakers  &  C.  Tea  Ass'n 

(Seb.  379),  262. 
Abernethy  v.  Hutchinson   (3  L.  J. 

Ch.  214),  225. 
Acme  Harvester  Co.  v.  Craver  (110 

III.  App.  413):  190. 
Actiengesellschaft     Vereingte     Ul- 

tramarine-Fabriken  v.  Amberg 

(102  Fed.  Rep.  551),  374. 
V.  Amberg  (48  C.  C.  A.  264),  374. 
Adams  v.  Heisel     (31    Fed.    Rep. 

279),  5,  113,  243,  291,  419,  450, 

452. 
Addington    v.    Cullinane    (28    Mo. 

App.   238),  355,  356. 
Adee  v.  Peck  Bros.  &  Co.  (39  Fed. 

Rep.  209),  6,  78,  121. 
A.  F.  Pike  Mfg.   Co.  v.  Cleveland 

Stone  Co.   (35  Fed.  Rep.  896), 

136,  137. 
Ainsworth   v.  Walmsley    (L.   R.   1 

Eq.  518),  96,  137,  179,  268,  295, 

298,  370,  374. 
Air  Brush  Mfg.  Co.  v.  Thayer  (84 

Fed.  Rep.  640),  46,  269,  460. 
Alaska   Packers'    Ass'n   v.   Alaska 

Imp.  Co.    (60  Fed.  Rep.  103), 

24,   72.   353. 
Albany   Perforated   Wrapping  Pa- 


per  Co.    v.    John    Hoberg   Co. 

(102  Fed.  Rep.  157).  308. 
Albert  v.  Strange   (2  DeG.  &  Sm. 

652),  225. 
Alden  v.  Gross  (25  Mo.  App.  123), 

90,  394. 
A.    Leschen   &    Sons   Rope   Co.   v. 

Broderick  &  Bascom  Rope  Co. 

(123  Fed.  Rep.  149),  459. 
V.  Broderick  &  Bascom  Rope  Co. 

(C.  C.  A.,  134  Fed.  Rep.  571), 

112,  321. 
Alexander  v.  Morse  (14  R.  I.  153), 

286. 
Alexander  Pirie  &  Sons  v  Goodall 

(L.  R.  1891,  1  Ch.  D.  35),  59. 
Alff  V.  Radam  (77  Texas,  530),  93. 
Alleghany  Fertilizer  Co.  v.  Wood- 
side  (Fed.  Case  No.  206),  87,  99, 

114,   302. 
Allegretti   v.    Allegretti    Chocolate 

Cream  Co.    (76  111.  App.  581), 

23. 
v.    Allegretti    Chocolate     Cream 

Co.    (177   111.   129),  23. 
Allegretti     Chocolate    Cream     Co. 

V.  Keller    (85  Fed.  Rep.  643), 

45,    144,    268. 
Allen  V.  McCarthy  (37  Minn.  349), 

56,  419. 
Allen  V.  McKeen    (1  Sumn.  276), 

174. 
Allen  B.  Wrisley  Co.  v.  Buck   (95 

Off.  Gaz.  2483),  293. 
V.   Geo.  E.  Rouse   Soap  Co.    (87 

Fed.  Rep.  589),  248,  254. 


XVil 


XVlll 


TABLE   OF  CASES. 


All-Arm 


References 

Allen  B.  Wrisley  Co.  v.  Iowa  Soap 

Co.    (104    Fed.   Rep.    548),   93. 
V.   Iowa   Soap  Co.    (59   C.  C.  A. 

54),   42,   93. 
Almy  V.  California  (24  How.  170), 

319. 
American  Book  Co.   v.  Gates    (85 

Fed.  Rep.  729),  47. 
American  Brewing  Co.  v.  St.  Louis 

Brewing  Co.  (47  Mo.  App.  14), 

249,  279. 
American  Cereal  Co.  v.  Eli  Petti- 

john  Cereal  Co.   (1),   (72  Fed. 

Rep.   903),   135   143,   154. 
V.  Eli  Pettijohn  Cereal  Co.   (2), 

(22  C.   C.  A.   236),  143,  379. 
American  Coat  Pad  Co.  v.  Phoenix 

Pad  Co.   (51  C.  C.  A.  339),  45. 
American    Fibre    Chamois    Co.    v. 

De  Lee  (67  Fed.  Rep.  329),  99, 

374. 
American  Grocer  Pub.  Co.  v.  Gro- 
cer  Pub.   Co.    (25    Hun,    398), 

256,  376. 
American  Grocery  Co.  v.  Sloan  (68 

Fed.  Rep.  539),  102,  286. 
American   Novelty   &   Mfg.    Co.   v. 

Manufacturing    Electrical   Co. 

(73  N.  Y.  Supp.  755),  280. 
American   Solid     Leather     Button 

Co.  V.  Anthony  (15  R.  I.  338), 

296,  418. 
American  Tobacco  Co.  v.  Guest  (L. 

R.,   1892,   1   Ch.   D.    630),   369, 

405. 
American  Waltham  Watch  Co.  v. 

Sandman    (96  Fed.  Rep.  330), 

130. 
V.     United     States     Watch     Co. 

(173  Mass.  85),  8,  130,  159. 
American  Washboard  Co.  v.  Sagi- 
naw   Mfg.    Co.    (43    C.    C.    A. 

233),  58,  87. 
Amoskeag  Mfg.  Co.  v.  Garner  (1), 

(55  Barb.  151),  120,  179,  256, 

269,  451. 


are  to  pages. 

Amoskeag  Mfg.  Co.  v.  Garner  (2), 

(54    How.    Pr.    297),   371,   406. 

V.   Spear    (2   Sandf.,  S.  C.  599), 

105,  127,  175,  176. 
V.  Trainer   (101  U.  S.  51),  3,  4, 
6,  68,  87,  126,  263,  297,  298,  299. 
Anargyros     v.     Egyptian     Amasis 
Cigarette  Co.   (66  N.  Y.  Supp. 
626),  284. 
Anderson   v.   Liebig's    Extract    of 
Meat  Co.  (45    L.  T.  N.  S.  757), 
47,   92. 
V.   Rowland    (18   Tex.   Civ.   App. 
460),  217. 
Angler  v.  Webber  (14  Allen,  211), 

206. 
Anglo-Swiss  Condensed  Milk  Co.  v. 
Metcalf  (L.  R.  31  Ch.  D.  454), 
280. 
Anheuser-Busch  Brewing  Ass'n  v. 
Clarke  (26  Fed.  Rep.  410),  249, 
294. 
V.  Fred  Miller  Brewing  Co.   (87 

Fed.  Rep.  864),  45,  124,  137. 
V.  Piza  (24  Fed.  Rep.  149),  129, 
137,  268,  294. 
Ansell  V.  Gaubert   (Seton,  4th  ed. 

235),  222. 
Appeal  of  Putnam  Nail  Co.   (Cox, 

Manual,  No.  725),  402. 
Apollinaris  Brunnen    v.    Somborn 

(Fed.   Case  No.  496),   283. 
Apollinaris  Co.  v.  Brumler    (Cox, 
Manual  429),  253. 
V.  Edwards  (Seton,  4th  ed.  237), 

96. 
V.  Herrfeldt   (4  P.   R.  478),   96, 

283. 
V.  Moore  (Cox,  Manual,  Case  No. 

675),  96. 
V.  Norrish  (33  L.  T.  N.  S.  242), 

55,  96. 
V.    Scherer    (27    Fed.   Rep.    18), 
96,   337. 
Armington   v.    Palmer    (43    L.    R. 
A.  95),  151. 


Arm-Bas 


TABLE  OF  CASES. 


XIX 


References 

Armistead    v.    Blackwell     (1    Off. 

Gaz.  603),  27,  99,  418,  423. 
Armstrong  v.  Bitner  (71  Md.  118), 

188,   209. 
V.   Kleinhaus    (82  Ky.   303),   33, 

179,   335. 
Armstrong  &  Co.  v.  Savannah  Soap 

Works    (53    Fed.     Rep.     124), 

338. 
Arthur  v.  Howard  (19  Pa.  Co.  Ct 

81),  101. 
Arundell  v.  Bell  (52  L.  J.  Ch.  537), 

190. 
Asbestos   &   Asbestic   Co.   v.   Wm. 

Sclater  Co.  (18  Rap.  Jud.  Que. 

C.  S.  360),  88. 
Atkinson    v.    Atkinson    (85    L.    T. 

Jour.  229),  338,  374. 
V.  John  E.  Doherty  &  Co.    (121 

Mich.  372),  238. 
Atlantic    Milling  Co.   v.   Robinson 

(20  Fed.  Rep.  217),  22,  33,  55, 

98,  178,  335. 
V.   Rowland    (27   Fed.  Rep.   24), 

38. 
Atwater  v.   Castner    (32   C.   C.   A. 

77),  93. 
Aubin  V.  Holt  (2  K.  &  J.  66),  191. 
Auerbach  &  Sons  v.   Hall  &  Hay- 
ward  Co.    (Ill  Off.  Gaz.  80G). 

325. 
Auten  V.  Boys   (2  DeG.  &  J.  62 C), 

189. 
Avery   v.    Meikle    (81   Ky.   73),    5, 

277,  299,  361. 
v.  Wilson    (20   Fed.   Rep.   856), 

378,    407. 
Ayer  v.  Hall  (3  Brewst.  509),  208. 
Ayers  v.  Rushton   (7  Daly,  9),  89. 

B 

Babbitt    v.   Brown    (68   Hun   515), 

11,  291. 
Backus   V.    Taylor    (84    Ind.    503), 

212. 
B.    A.    Corbin    &    Son    v.     Miller, 


are  to  pages. 

Kohlhepp,   Giese    &    Co.,    (98 

Off.   Gaz.   1485),  326. 
Bagby  &  Rivers  Co.  v.  Rivers   (87 

Md.  400),  199,  211. 
Bagley  v.  Peddle    (16  N.  Y.  469), 

213. 
Bailly  v.  Nashawannuck  Mfg.  Co. 

(51  Off.  Gaz.  970),  101. 
Bain  v.  Munro    (15  Scot.  L.  Rep. 

260),  190. 
Baker  &  Co  v.  Baker  (77  Fed.  Rep. 

181),  144. 
Baker  v.  Baker  (53  C.  C.  A.  157), 

154. 
Baldwin  v.  Von  Micheroux  (25  N. 

Y.    Supp.    857),     22,     34,     228, 

335. 
Ball  V.  Best  (135  Fed.  Rep.  434),      ^ 

20,   309. 
V.  Siegel   (116  111.  137),  91,  243, 

261,  267,  419. 
Ball  &  Socket  Fastener  Co.  v.  Cohn 

(90  Fed.  Rep.  664),  367. 
Banks  v.  Gibson  (34  Beavan,  566), 

9,  23,  26,  28,  189. 
Barber  v.  Connecticut  Mutual  Life 

Insurance    Co.    (15    Fed.   Rep. 

312),  186. 
Barlow   v.    Johnson    (7    R.    P.    C. 

395),   103,   124,   282,   301. 
Barnett  v.  Leuchars    (13  L.  T.  N. 

S.  495),  274. 
Barrett  v.  Gomm    (74  L.  T.  Jour- 
nal 388),  294,  375. 
Barrett    Chemical    Co.    v.    Stearn 

(176  N.  Y.  27),   85. 
Barrows  v.  Knight   (6  R.   I.  434), 

103,    139,   361. 
V.  Pelsall  (Seb.  530),  297. 
Barry  v.  Edmunds  (116  U.  S.  550), 

358. 
Bass  V.  Dawber   (19   L.   T.   N.   S. 

625),  402. 
Bass,  Ratcliff  &  Gretton  v.  Feigen- 

span    (96   Fed.  Rep.    206).   16, 
269,  290,  294,  372,  373,  460. 


XX 


TABLE   OF  CASES. 


Bas-Boa 


References 

Bass,   Ratcliff   &   Gretton   v.   Gug- 

genheimer  (69  Fed.  Rep.  271), 

369,    403. 
Bassett  v.  Percival  (87  Mass.  345), 

197. 
Batcheller    v.    Thomson    (1),    (86 

Fed.   Rep.    630),    26,   33,   207. 
V.   Thomson    (2),    (35   C,   C.   A. 

532),  80. 
Bateman  v.  Fargason  (4  Fed.  Rep. 

32),  376. 
Battersby    v.     Collier     (54    N.    Y. 

Supp.  363),  48. 
Battershall  v.  Bauer   (91  111.  App. 

181),  209. 
Battle  V.  Finlay  (1),  (45  Fed.  Rep. 

796),  97,  110. 
V.    Finlay    (2),    (50    Fed.    Rep. 

106),  16,  97,  328,  373. 
Batty  V.  Hill  (1  H.  &  M.  264),  94. 
Beadleston  &  Woerz  v.  Cooke  Brew. 

Co.    (20C.  C.  A.  405),  7,  91, 161. 
Beakin   v.    Stanton    (3    Fed.    Rep. 

435),    381. 
Beal  V.  Chase  (31  Mich.  490),  208. 
Beard  v.  Turner    (13  L.  T.  N.   S. 

746),  114,  175,  294. 
Beebe  v.    Tolerton   &    Stetson   Co. 

(117  Iowa   593),   56. 
Bein  v.  Heath    (12  Howard  168), 

381. 
Bell  V.  Ellis  (33  Cal.  620),  186. 
Bell    V.    Gibson    (75    N.    Y.    Supp. 

753),  642. 
V.  Locke   (8  Paige,  75),  37,  102, 

165,  168. 
Bell  &  Bogart  Soap  Co.  v.  Petrolia 

Mfg.  Co.  (54  N.  Y.  Supp.  663) 

227. 
Benbow  v.  Low   (L.  R.  16  Ch.  D. 

93),    396. 
Benedictus  v.   Sullivan    (12  P.   R. 

25),  284. 
Benkert   v.   Feder    (34   Fed.    Rep. 

534),  366,  383,  781,  789. 
Bennett  v.  McKinley   (13  C.  C.  A. 

25).  86.  91,  159,  160. 


are  to  pages. 

Benton    v.    Ward    (59    Fed.    Rep. 

411),   227. 
Bergamini  v.  Bastian  (35  La.  Ann. 

60),    197. 
Berliner    Brauerei    Gesellschaft  v. 

Knight    (W.    N.    1883,   p.    70), 

104. 
Bickmore  Gall  Cure  Co.  v.  Karns 

(134  Fed.  Rep.  833),  45. 
V.    Karns    Mfg.    Co.     (126    Fed. 

Rep.   573),   393. 
Bingham  School  v.  Gray   (122  No. 

Car.  699),  143. 
Bininger  v.  Clark   (60  Barb.  113), 

211. 
Binninger   v.    Wattles     (28     How. 

Pr.    206),   93,    143. 
Bissell  Chilled   Plow  Works  v,  T. 

M.  Bissell  Plow  Co.   (121  Fed. 

Rep.   357),  17. 
Black  V.  Allen  (42  Fed.  Rep.  618), 

367. 
V.    Ehrich    (44   Fed.   Rep.    793), 

90,    164. 
Blackwell  v.  Armistead  (Fed.  Case 

No.   1474),   51,  99,   285. 
V.  Crabb  (36  L.  J.  Ch.  504),  294. 
V.  Dibrell  (Fed.  Case  No.  1,475), 

99,   130,   134,   176. 
V.  Wright  (73  N.  C.  310),  89,  99, 

266. 
Blakey  v.  Latham   (85  L.  T.  Jour- 
nal,  47),   77. 
Blanchard    v.    Hill    (2    Atk.    484), 

13,  36. 
Block  V.  Standard  Distilling  &  Dis- 
tributing   Co.     (95    Fed.    Rep. 

978),  45,   366. 
Bloete    V.    Simon    (19   Abb.    N.    C. 

88),   56,  419. 
Blofield  V.  Payne  (4  B.  &  Ad.  410), 

295,  347,  358,  373. 
Bloss  V.  Bloomer    (23  Barb.   604), 

354. 
Boardman    v.    Meriden   Britannia 

Co.    (35  Conn.  402),   296,  298, 

373. 


Bod-Buc 


TABLE   OF  CASES. 


XXI 


References  are  to  pages. 


Bodega  Co.  Ltd.  v.  Owens   (23  Ir. 

L.   R.   371),  354. 
Boessneck  v.  Iselin  (82  N.  Y.  Supp. 

164),  291. 
Bolander    v.     Peterson     (136     111. 

215),   95. 
Bolen  &  Byrne  Mfg.  Co.  v.  Jonasch 

(60  N.  Y.  Supp.  555).   273. 
Bond  V.  Milbourn  (20  W.  R.  197), 

23. 
Bondier     v.     Depatie    (3    Dorion, 

233),   297. 
Boon  V.  Moss   (70  N.  Y.  465),  192. 
Booth    V.    Jarrett     (52    How.    Pr. 

169),  146,  178. 
Borthwick  v.  Evening  Post  (L.  R. 

37  Ch.  D.  449),  168. 
Boston  Diatite  Co.  v.  Florence  Mfg. 

Co.    (114    Mass.    69),    16,    238, 

257. 
Boutell  V.  Smith   (116  Mass.  Ill), 

209. 
Bowden   v.    Randolph   Tp.    (41   N. 

J.  Law  462),  638. 
Bowman  v.  Floyd  (85  Mass.  76),  8. 
Boynton    v.    Shaw     Stocking     Co. 

(146  Mass.  219),  48. 
Bozon  V.  Farlow  (1  Mer.  459),  191. 
Bradbury    v.    Barden     (35     Conn. 

577),  191. 
V.   Beeton    (39  Law  J.  Ch.   57). 

168. 
V.  Dickens   (27  Beav.  53),  27. 
Bradford  v.  Peckham  (9  R.  I.  250), 

198,    206. 
Bradley  v.  Norton  (33  Conn.  157), 

98. 
Rraham  v.  Beachim  (7  Ch.  D.  848), 

55. 
V.  Bustard   (9  L.  T.  N.  S.  199), 

99,  114,  181.   242,  262. 
Brandreth  v.  Lance  (8  Paige,  24), 

238. 
Brant   v.    Frolich    (49   N.   J.   Law 

336),    638. 
Brass  &  Iron  Works  Co.  v.  Payne 

(50  Ohio  St.  115),  207,  210. 


Braun  &  Co.  v.  Blackwell   (19  Off. 

Gaz.  481),  421. 
Brennan      v.      Emery-Bird-Thayer 

Dry  Goods  Co.    (99  Fed.  Rep. 

971),  95. 
V.  Emery-Bird-Thayer  Dry  Goods 

Co.   (47  C.  C.  A.  532),  95,  158. 
Brewer   v.    Lamar    (69    Ga.    656), 

146. 
Brill  V.  Singer  Mfg.  Co.   (41  Ohio 

St.  127),  79,   243,   253,   419. 
Bristol  V.  Equitable  Life  Assurance 

Society    (132  N.  Y.  264),  227. 
Broadhurst    v.     Barlow     (W.     N. 

1872,  p.  212),  119,  296,  299. 
Broderick  &   Bascom   Rope  Co.  v. 

A.  Leschen  &  Dons  Rope  Co. 

(100  Off  .Gaz.  3011),  325. 
Brooklyn  White  Lead  Co.  v.  Mas- 

ury   (25  Barb.  416),  128. 
Brower  v.  Boulton    (1),    (53  Fed. 

Rep.  389),  21,  60,  64,  321,  449. 
V.  Boulton  (2),  (7  C.  C.  A.  567). 

21,    60,    459. 
Brown    v.    Braunstein    (83    N.    Y. 

Supp.  1096),  279,  377. 
V.  Doscher   (147  N.  Y.  647),  45, 

243. 
V.   Mercer    (37  N.   Y.   Super.   CL 

265),  656. 
Brown  Chemical  Co.  v.  Meyer  (1), 

(31  Fed.  Rep.  453),  124,  188. 
V.   Meyer    (2),    (139   U.   S.   540), 

24,  91,  141,  143,   144,  159,   188, 

784. 
V.  Sterns  (37  Fed.  Rep.  360),  91. 
Browne  v.   Freeman    (1),    (12   W. 

R.  305),  89.  120.  177. 
V.  Freeman    (2).    (Cox.  Manual, 

424),  46.  89,  120. 
Bryson  v.   Whitehead    (1   S.   &   S. 

74),  189. 
Buckland    v.    Rice    (40    Ohio    St. 

526).    70. 
Buck's     Stove     &    Range     Co.     v. 

Kiechle    (76   Fed.   Rep.     758), 

248. 


XXll 


TABLE   OF  CASES. 


Bue-Car 


References  are  to  pages. 


Biierk   v.    Imhaeuser    (Fed.    Case 

No.    2107a),    401. 
Bulena  v.  Newman  (31  N.  Y.  Supp. 

449),   56,    655. 
Bulloch,  Lade  &  Co.  v.   Gray    (19 

Jour.  Juris.  218),  92,  128. 
Bullock    V.    Chapman    (2    DeG.    & 

Sm.  211),  46. 
Bulte  V.  Igleheart  Bros.   (137  Fed. 

Rep.  492),  24. 
Bunker  v.  Kenna  (Price  &  Steuart 
883),   279. 
V.   Stevens   (26  Fed.  Rep.   245), 
402. 
Bunn  V.  Guy  (4  East.  190),  191. 
Burckhardt     v.     Burckhardt      (36 
Ohio  St.  261),  23,  213,  215. 
V.  Burckhardt  (42  Ohio  St.  474), 
214,  218. 
Burfield  v.  Rouch   (31  Beav.  241), 

193. 
Burgess  v.  Burgess   (3  DeG.  IT.  u 
G.  896),  128,  140,  141,  144. 
V    Hately    (26    Beav.    249),    375, 

402,  404. 
V.  Hills  (26  Beav.  244),  256,  283, 
402,    404. 
Burke  v.  Cassin  (45  Cal.  467),  94. 
Burkhardt    Co.    v.    Burkhardt    Co. 

(4  Ohio  N.  P.  358),  26,  31. 
Burnett    v.    Hahn    (88    Fed.    Rep. 
694),   366,  377. 
V.  Leuchars  (13  L.  T.  N.  S.  495), 

403. 
V.    Phalon    (1),    (21    How.    Pr. 

100),  384. 
V.  Phalon  (2),  (9  Bos.  193),  110. 
Burt  V.  Smith  (71  Fed.  Rep.  161), 
249,  253,  291,  299,  328,  329. 
V.  Tucker   (178  Mass.   493),   63, 
101,   176,  179. 
Burton  v.  Stratton    (12  Fed.  Rep. 
696),  22,  70,  79,  104,  108,  120, 
122,  129,  158,  181,  299. 


Bury  V.  Bedford    (4  DeG.  J.  &  S. 

352),  25,  30,  31. 
Butler   V.   Burleson    (16   Vt.   176), 

192. 
V.    Fayerweather    (33    C.   C.   A. 

625),   398,   400. 
Byam  v.   Bullard    (Fed.  Case  No. 

2262),  393. 
Byass    v.    Sullivan    (21    How,    Pr. 

50),  396. 
Byron  v.  Johnston  (2  Mer.  29),  43. 


c 


Cady  v.  Schultz   (19  R.  I.  193),  4, 

95,    280. 
Cahn  V.  Gottschalk  (2  N.  Y.  Supp. 

13),   92,   137,   286. 
V.    Hoffman    House    (28     N.     Y. 

Supp.  388),  92. 
California    Fig    Synip    Co.    v.    Im- 
proved    Fig     Syrup    Co.     (51 

Fed.  Rep.  296),  88,  122,  338. 
V.   Putnam   (66  Fed.  Rep.  750), 

88,  122. 
V.    Stearns    (1),    (67    Fed.   Rep. 

1008),   70,   88,  122. 
V.    Stearns    (2),    (73    Fed.    Rep. 

812),  70,   88. 
V.   Worden    (95   Fed.  Rep.   132), 

68,  88,  122. 
California  Fruit  Canners'  Ass'n  v. 

Meyer     (104    Fed.    Rep.     82), 

132,    136. 
Campbell    Printing   Press     Co.     v. 

Manhattan  R.  R.  Co.   (49  Fed. 

Rep.  930),  381. 
Candee  v.  Deere   (54  111.  439),  93, 

128,   141,   243,   306. 
Canham  v.  Jones  (2  V.  &  B.  218), 

219. 
Cantrell  &  Cochrane,  Ltd.  v.  Witte- 

mann  (109  Fed.  Rep.  82),  259, 

380. 
Carbolic  Soap  Co.  v.  Thompson  (25 

Fed.  Rep.  625),  89,  249,  338. 


Car-Che 


TABLE   OF  CASES. 


XXlll 


References 

Carey  v.   New   Home   Sewing  Ma- 
chine Co.   (101   Off.  Gaz.  448), 

326. 
Carey's  Appeal    (75  Pa.   St.   201), 

450. 
Carmichael  v.   Latimer    (11   R.   I. 

395),  24,  129,  143,  179,  335. 
Carnrick  v.   Morson    (L.   J.   N.  of 

C,  1877,  p.  71),  101,  286. 
Carroll  v.  Ertheiler    (1   Fed.  Rep. 

688),  102,  269,  373,  375. 
Carrington    v.    Libby    (14    Blatch. 

128),    418. 
Carson  v.  Ury  (39  Fed.  Rep.  777), 

41.   57,   260,   755. 
Cartier  v.  Carlile   (31  Beav.  292), 

256.  297,  299. 
V.  May  (Seb.  200),  297,  399. 
V.  Westhead   (Seb.  199),  297. 
Caruncho   v.   Stephenson    (25   Sol. 

J.  929),  115. 
Carver  v.  Bowker  (Seb.  581),  296. 
V.  Pinto  Leite   (L.  R.  7  Ch.  D. 

90),  296,  339. 
Cassidy   v.    Metcalf    (1    Mo.   App. 

593),  200,   208. 
V.  Metcalf  (66  Mo.  519),  200,  208. 
Castle  V.  Siegfried  (103  Calif.  71), 

112. 
Castner    v.    Coffman    (178     U.     S. 

168). 
Caswell  V.  Davis   (58  N.  Y.   223), 

90,   109,    111. 

V.  Hazard  (121  N.  Y.  484),  26. 
CaufTman   v.    Schiiler     (123     Fed. 

Rep.   205),  268. 
Cave    V.    Meyers    (Seton,    4th    ed. 

238),  76,   172,  272. 
Cellular    Clothing    Co.    v.    Maxton 

(L.    R.    1S99,   A.    C.    326),   11, 

88.   124,   125,  126,   397. 
Celluloid     Mfg.    Co.    v.    Cellonite 

Mfg.    Co.    (32   Fed.   Rep.    94), 

98,  151,  152,  154,  156,  181,  283, 

371.    374,    379. 
Celluloid    Mfg.    Co.    v.    Read     (47 

Fed.  Rep.  712) ,  97.  370,  371,  392. 


are  to  pages. 

Centaur  Co.  v.  Heinsfurter  (28  C. 
C.  A.  581),  79. 
V.  Hughes  Bros  Mfg.  Co.   (34  C. 

C.  A.   127),    79,   88,   109,   122. 
V.   Killenberger    (87    Fed.    Rep. 

725),   79,   122,   375. 
V.  Link  (62  N.  J.  Eq.  147),  81,  88. 
V.   Marshall    (38   C.   C.   A.    413), 

79,  256. 
V.  Neathery    (34   C.  C.  A.   118). 

79.   88,   109,   122. 
V.  Robinson  (91  Fed.  Rep.  889), 
68,   79,  88,  109,  122. 
Central  Transportation  Co.  v.  Pull- 
man's Palace  Car  Co.   (139  U. 
S.  24),  219. 
C.  F.  Simmons  Med.  Co.  v.  Mans- 
field Drug  Co.   (93  Tenn.  84), 
256. 
v.  Simmons   (81  Fed.  Rep.  162), 
45,  249. 
Chadwick    v.    Covell     (151    Mass. 

190),  23. 
Champion  v.  Ames  (188  U.  S.  321). 

318. 
Champlin  v.    Stoddart     (30    Hun. 
300),   219. 

Chancellor  of  Oxford  University  v. 

Wilmore-Andrews     Pub.      Co. 

(101  Fed.  Rep.  443),  103. 
Chapleau  v.  Laporte  (16  Rap.  Jud. 

Que.   C.    S.  189),   360. 
Chappell   V.   Davidson    (2  K.  &  J. 

123),  262,  375,  402. 
Charles  E.  Hires  Co.  v.  Consumers' 

Co.   (41  C.  C.  A.  71),  243,  253, 

272,  379,  387,  389. 
Chase   v.    Mays    (121   Mass.    343). 

446. 
Chattanooga  Med.  Co.  v.  Thedford 

(1),  (49  Fed.  Rep.  949),  31. 
v.  Thedford   (2),   (58  Fed.  Rep. 

347),    31. 
Cheavin  v.   Walker    (L.  R.   5   Ch. 

D.  850),  75. 


XXIV 


TABLE   OF  CASES. 


Chi-Cof 


References 

Chicago       Landlord's       Protective 

Bureau   v.   Koebel     (112     Ills. 

App.  21),  2S6. 
Chickering  v.  Chickering  &  Sons 

(56   C.   C.   A.   475),   145,   389. 
Chissum  v.  Dewes    (5   Russ.   29), 

189. 
Chittenden   v.   Witbeck    (50   Mich. 

401),   195. 
Choynsnki  v.  Cohen  (39  Cal.  501), 

88. 
Christy  v.   Murphy    (12   How.   Pr. 

77),   142,   147,   176. 
Chubb  V.  Griffiths  (35  Beav.  127;, 

372,  402. 
Church     V.     Kresner     (49     N.     Y. 

Supp.   742),   272. 
Church  &  Dwight  Co.  v.  Russ   (99 

Fed.  Rep.  276),  35,  44,  257,  270. 
Churton  v.  Douglass  (Johns,  174), 

23,  31,  148,  186,  196. 
Cigarmakers'  International    Union 

of  America  v.  Goldberg  (N.  J., 

57  Atl.  Rep.   141),   56,   638. 
Cigarmakers'   Protective  Union  v. 

Conhaim  (40  Minn.  726),  4,  56. 

V.  Lindner  (3  Ohio  St.  244),  56. 

City  Brewery  Co.  v.  Powell   (1897 

A.   C.   710),   182. 
City  of  Carlsbad  v.  Kutnow    (1), 

(68    Fed.    Rep.    794),    55,   129, 

378,   397. 
V.  Kutnow  (2),  (18  C.  C.  A.  24), 

55,    134. 
v.   Schultz    (78   Fed.   Rep.   469), 

55,   129,  134,   386. 
V.  Thackeray  (57  Fed.  Rep.  18), 

137. 
V.  Tibbetts    (51  Fed.  Rep.  852), 

45. 
Clark    V.    Aetna    Iron   Works    (44 

Ills.  App.  510),  156. 
V.  Clark  (25  Barb.  76),  143,  144. 
V.  Freeman  (11  Beavan  112),  4'6, 

368. 
V.   German   Mutual    Ins.   Co.    (7 

Mo.  App.  71),  24. 


are  to  pages. 
Clark  V.  Leach   (32  Beav.  14),  23. 
Clark  Thread  Co.  v.  Armitage  (21 

C.  C.  A.  178),  146,  284. 
V.    William   Clark   Co.    (1),    (55 

N.  J.  Eq.  658),  377, 
V.   William   Clark   Co.    (2),    (56 

N.   J.   Eq.   739),   383. 
Clayton  v.   Stone    (2  Paine,   382), 

167. 
Clemens  v.  Belford    (14  Fed.  Rep. 

728),   162,   168,  419. 
Clement  v.  Maddick    (1  Giff.  98), 

164,   168,   376. 
Cleveland    Stone    Co.    v.    Wallace 

(52    Fed.    Rep.    431),   52,    249, 

373. 
Clinton  E.  Worden  &  Co.  v.  Cali- 
fornia Fig.  Syrup  Co.  (  187  U. 

S.  516),  70. 
Clinton  Metallic  Paint  Co.  v.  New 

York   Metallic   Paint  Co.,    (50 

N.  Y.  Supp.  437),  93,  128,  347. 
Close  V.  Flesher  (59  N.  Y.  S.  Rep. 

283),   206. 
Clotworthy    v.    Schepp     (42    Fed. 

Rep.  62),  70,  94,  103,  290. 
Coats  V.  Chadwick   (L.  R.,  1894,  1 

Ch.    D.    347),    398. 
V.  Holbrook   (2  Sandf.  Ch.  586), 

19,  62,  262,  338,  373,  375,  402, 

404. 
V.  Merrick  Thread  Co.    (1),   (36 

Fed.  Rep.  324),  79,  249,  261. 
V.  Merrick  Thread  Co.  (2),  (149 

U.  S.  562),  141,  300. 
V.  Piatt   (17  Leg.  Int.  213),  143. 
C.  0.  Burns  Co.  v.  W.  F.  Burns  Co. 

(118  Fed.  Rep.  944),  173. 
Cochrane  v.  Macnish   (L.  R.,  1896, 

A.  C.  225),  98. 
Cocks  v.   Chandler    (L.  R.   11  Eq. 

447),  123,  368. 
Coe     V.     Bradley    (Fed    Case    No. 

2941),  33,   284. 
Coffeen  v.  Brunton  (1),  (Fed.  Case 

No.   2946),  62,   98,  358,  793. 


n* 


.  f» 


Cof-Cop 


TABLE   OF  CASES. 


xzv 


References 

Coffeen   v.   Brunton    (2),     (5    Mc- 
Lean,  256).   98,   2(i6,   294,   373. 
Coffman   v.   Castner    (31   C.  C.  A. 

55),  93. 
Cohn  V.  People  (149  Ills.  486),  56 

558. 
Coleman  v.   Flavel    (40   Fed.  Rep. 

854),  303. 
Colgan  V.  Danheiser  (35  Fed.  Rep. 

150),  95. 
Colgate  V.   Adams    (88    Fed.    Rep. 

899),   97,   283. 
V.  Compagnie  Francaise  (23  Fed. 

Rep.  82),  395. 
Colley  V.  Hart  (7  R.  P.  C.  101),  47. 
Collins  V.  Reynolds  Card  Mfg.  Co. 

(7  Abb.  N.  C.  17),  289,  296. 
Collins  Co.  V.   Brown    (3   K.  &  J. 

423),   19,  62. 
V.  Cowen,  (3  K.  &  J.  428),  19,  62. 
V.  Oliver  Ames  &  Sons  (18  Fed. 

Rep.   561),   269,  371,  383,   41)7. 
V.  Reeves  (28  L.  J.  Ch.  56),  19, 

62. 
V.  Walker  (7  W.  R.  222),  19,  62, 

402.  404. 
Collins  Chem.  Co.  v.  Capitol  City 

Mfg.    Co.    (42    Fed.    Rep.    64), 

372,  391. 
Collinsplatt  v.  Finlayson   (88  Fed. 

Rep.   693),  130,  131,   245,  268, 

362,  366. 
Colloday  v.  Baird    (4  Phila.  139), 

111. 
Colman  v.  Crump   (70  N.  Y.  573), 

256,   259,   267,   268,  374,   378. 
Colton  v.  Thomas  (2  Brews.  308), 

793. 
Columbia  Mill   Co.  v.  Alcorn    (1), 

(40  Fed.  Rep.  676),  392. 
V.  Alcorn    (2),   (150  U.  S.  460), 

58,  63.  126,  128,  132,  159. 
Comer  v.  State   (103  Ga.  69),  549. 
Commercial    Advertiser    Ass'n    v. 

Haynes   (49  N.  Y.  Supp.  938), 

167,  168. 


are  to  pages. 

Commonwealth   v.   Anselvich   (186 

Mass  376),  589. 
v.    Rozen    (176    Mass.    129),   57, 

589,  590. 
Compagnie    Laferme  v.   Hendrick 

(Seb.    512),    402. 
Compania   General   de   Tobacos   v. 

Rehder    (5  R.  P.  C.   61),   262, 

266. 
Computing  Scale  Co.   v.   Standard 

Computing  Scale  Co.  (55  C.  C. 

A.   459),  89,   158,   159. 
Comstock  v.  White    (18  How.  Pr. 

421),  101,  143,  219,  375. 
Condy  v.  Mitchell    (37  L.  T.  N.  S. 

268),   26,   30,  219. 
Congress  &  Empire  Spring  Co.  v. 

High   Rock    Congress    Spring 

Co.     (45    N.    Y.    291),    16,    23, 

55,    98,   129. 
Connell  v.  Reed    (128  Mass.  477), 

70. 
Conrad    v.    Brewing    Co.     (8     Mo. 

App.   277),  358. 
Consolidated  Fruit  Jar  Co.  v.  Dor- 

flinger    (Fed.    Cas.   No.   3129), 

72. 
V.  Thomas   (Cox,  665),  172. 
Continental  Ins.  Co.  v.  Continental 

Fire  Ass'n  (96  Fed.  Rep.  846), 

89,   153,   309. 
V.  Continental  Fire  Ass'n  (41  C. 

C.  A.  326),  89,   153. 
Continental  Tobacco  Co.  v.   Larus 

&    Bro.    Co.     (C.    C.    A.,    133 

Fed.  Rep.  727),  247. 
Cook  &  Bernheimer  Co.    v.    Ross 

(73   Fed.   Rep.   203),   250. 
Cook  V.  Starkweather  (13  Abb.  Pr. 

N.  S.  392).  373,  391,  418. 
Cooke    &   Cobb   Co.    v.    Miller    (65 

N.  Y.  Supp  730).  90. 
Cooper   V.    Hood    (26    Beav.    293), 

23,  194. 

Cope  v.  Evans  (L.  R.  18  Eq.  138), 
115,  392. 


XXVI 


TABLE   OF  CASES. 


Cor-D«y 


References 

Corbin  v.  E.  Taussig  &  Co.    (132 

Fed.  Rep.  662),  368. 
V.  Gould   (133  U.  S.  308),  95. 
Corliss  V.  E.  W.  Walker  Co.   (1), 

(57  Fed.  Rep.  434),  238. 
V.   E.   W.    Walker   Co.    (2),    (64 

Fed.  Rep.  280),  225,  239. 
Corwin  v.  Daly  (7  Bos.  222),  22,  89. 
Cory   V.    Gertcken    (2   Madd.    49), 

402. 
Costello  V.  Eddy   (12  N.  Y.  Supp. 

236),    188,   199,   200. 
V.  Eddy  (128  N.  Y.  650),  198. 
Cotton   V.   Gillard    (44   L.    J.    Ch. 

90),  21,  22,  25,  102. 
Cottrell  V.   Babcock   Mfg.   Co.    (54 

Conn.  138),  198,  206. 
Cravenette   Co.   v.  Bsnjamin    (105 

Fed.  Rep.  621),  256. 
Craver  v.  Acme  Harvester  Co.  ( 209 

111.   483),  190. 
Crawford  v.  Lans   (60  N.  Y.  Supp. 

387),  286. 
Crawshay  v.  Thompson  (4  M.  &  G. 

357),   255,   266,   297,   351. 
Crocker   Wheeler   Co.     v.     Bullock 

(134  Fed.  Rep.  241),  231. 
Croft  V.  Day  (1),  (7  Beavan,  84), 

28,  38,  41,  140,  335. 
V.  Day    (2),   (Cox,  Manual,  No. 

77),  399. 
Cruess    v.    Fessler    (39   Cal.    336), 

216. 
Crutwell  V.  Lye  (17  Ves.  335),  43, 

186,  189,  198. 
Cuervo   v.   Jacob  Henkell  Co.    (50 

Fed.   Rep.   471),  259,   374. 
V.  Landauer  (63  Fed.  Rep.  1003), 

377. 
Curtis  V.  Bryan  (2  Daly,  212),  69, 

119,  376. 
V.  Gokey  (68  N.  Y.  300),  189. 
V.  rape    (5  R.  P.  C.  146),  124. 
Cutter  V.  Gudebrod  Bros  Co.   (1), 

(55  N.  Y.  Supp.  298),  295. 
V.  Gudebrod  Bros  Co.    (2),    (61 

N.  Y.  Supp.  225),  30. 


are  to  pages. 


D 


Dadirrian  v.  Gullian  (79  Fed.  Rep. 
784),  400. 
V.   Theodorian    (37   N.  Y.  Supp. 

611),  117. 
V.  Yacubian    (1),   (72  Fed.  Rep. 

1010),   92,   118. 
V.  Yacubian   (2),   (90  Fed.  Rep. 

812),  92,   118. 
V.    Yacubian    (3),    (39    C.   C.   A. 
321),  66,  118. 
Dakin    v.    Williams    (17    Wendell, 

447),  213. 
Dale    v.    Smithson     (12    Abb.    Pr. 

237),  149. 
Dant  V.  Head    (90  Ky.  255),  23. 
Daugberty    v.    Van     Nostrand     (1 

Hoff.  Ch.  N.  Y.  68),  195. 
Dausmann  &  Drummond   Tobacco 
Co.  V.  Ruffner   (Fed.  Case  No. 
3585),    244. 
Davey  v.   Darey    (50  N.  Y.  Supp. 

161),  47. 
Davies  v.  Hodgson  (25  Beav.  177), 

189,   205. 
Daviess    County    Distilling    Co.    v. 
Martinoni  (117  Fed.  Rep.  186), 
92. 
Davis  v.  A.  Booth  &  Co.  (65  C.  C, 
A.  269),  204. 
V.   Davis    (27  Fed.  Rep.  490),  5 

112,  113,  243,  380,  419,  452. 
V.   Kendall    (2   R.    I.    566),    103, 

219,  261. 
V.  Kennedy  (13  Grant,  Up.  Can. 

Ch.  523),  62,  103. 
V.  Stribolt   (59  L.  T.  854),  115, 
117. 
Dawes  v.  Davies   (Seb.  426),  265. 
Dawson  v.  Beeson    (L.   R.  24  Ch. 

D.   504),    211. 
Day  V.  New  England   Car  Spring 
Co.    (3   Blatchf.   154),   401. 
V.  Woodworth   (13    How.    363), 
351,  357. 


Day-Dra 


TABLE   OF  CASES. 


xwn 


References  ai 

Dayton   v.    Wilkes    (17    How.    Pr. 

516),  188,  198. 
Deakin    v.    Stanton    (3    Fed.   Rep. 

435). 
Dean  v.  Emerson  (102  Mass.  480), 

188. 
Decker    v.    Decker    (52    How.    Pr. 

218),  143,  354,  413. 
Deering  Harvester  Co.  v.  Whitman 

&   Barnes   Mfg.    Co.    (91    Fed. 

Rep.  376),  15,  126,  128. 
De  Florez  v.  Raynolds  (14  Blatchf. 

505),  393. 
De  Kuyper  v.  Witteman    (23  Fed. 

Rep.  871),   259,   260,  366. 
Delaware  &   Hudson  Canal  Co.  v. 

Clark    (13   Wall.   311),  84,  92, 

105.  108,  126,  128,  133,  134. 
DeLong   v    DeLong    Hook   &    Eye 

Co.    (74  Off.  Gaz.  809),  144. 
DeLong  Hook  &  Eye  Co.  v.  Fran- 
cis Hook  &  Eye  Co.  (118  Fed. 

Rep.    938),    244. 
Del    Valle    v.    Mayer    (Seton,    4th 

ed.,  236),  339. 
Dempsey  v.  Dobson,    (174  Pa.   St. 

122),   224. 
Dence  v.  Brand,    (W.  N.   1881,  p. 

31-),  407. 
V.  Mason    (41  L.  T.  N.  S.  573), 

24. 
Dennison  Mfg.  Co.  v.  Thomas  Mf;-. 

Co.    (94  Fed.  Rep.  651),  3,  15, 

40,    96,    106,    128,    297. 
V.  ScharfE  Tag  Label  &  Box  Co. 

(135  Fed.  Rep.  625),  295. 
Dent  V.  Turpin  (30  L.  J.  Ch.  495), 

26,    42,    336. 
Denver  Railway  v.  Harris  (122  U. 

S.    597),    358. 
Derby  Dry  Plate  Co.  v.  Pollard  (2 

Times,  L.  R.  276),   284. 
Dering  v.   Earl  of  Winchelsea    (1 

Cox.    Ch.    318).    376. 
Derringer  v.  Plate   (29  Cal.  292), 
4,  16,   19,  63,   99. 


e  to  pages. 

Devlin  v.  Devlin   (69   N.  Y.  212), 
145,   398.   399,  406. 
v.  McLeod   (135  Fed.  Rep.  164), 

45,  95. 
V.  Peek  (135  Fed.  Rep.  167),  95. 
Dewitt  V.  Mathey   (18  Ky.  L.  Rep. 

257),    56,    179. 
Diamond  Match  Co.  v.  Roeber  (106 
N.    Y.    473),    200. 
V.  Safe  Harbor  Match  Co.    (109 
Fed.  Rep.  154),  400. 
Dicks  V.   Yates    (L.   R.  18   Ch.   D. 

76),   168. 
Dickson  v.  McMaster  (18  Ir.  Jur. 

202),    24,    335. 
Dixon    v.    Fawcus    (3    Ell.    &   Ell. 
537),    260,   262,   406. 
V.  Jackson  (2  Scot.  L.  Rep.  188), 
104. 
Dixon  Crucible  Co.  v.  Benham  (4 
Fed.  Rep.  527),  302. 
V.    Guggenheim     (3    Am.    L.    T. 
228),    21,   69,   166,   178. 
Dobell  V.  Stevens  (3  B.  &  C.  623), 

216. 
Dobson  V.  Graham    (49  Fed.  Rep. 

17),   220.    396. 
Dodge  Stationery  Co.  v.  Dodge  (78 

Pac.  Rep.  879),  146. 
Dorman  v.  Keefer    (49   Fed.  Rep. 

462),  230. 
Dover   Stamping   Co.    v.     Fellows 
(163    Mass.    191),    14,    79,    81, 
253,    255,    590. 
Dow  V.  Electric  Co.    (41  Atl.  Rep. 

288),    214. 
Dowling  V.  Livingstone,  (108  Mich. 

321),   48. 
Drake  v.  Dodsworth  (4  Kas.  159), 

197,   198. 
Drake  Medicine  Co.  v.  Glessner  (68 

Ohio  St.  337),  99,  138. 
Draper  v.   Skerrett   (1),    (94  Fed. 
Rep.  912),  45. 
V.  Skerrett   (2).   (116  Fed.  Rep. 
206),    42,   90,   330. 


xxvni 


TABLE   OF  CASES. 


Dad-Elm 


References 

Dr.  Dadirrian  &  Sons  Co.  v.  Hau- 

enstein   (74  N.  Y.  Supp.  709), 

92. 
Dr.    David    Kennedy  Corp.  v.  Ken- 
nedy   (55    N.    Y.    Supp.    917), 

148. 
Drewry  &  Son  v.  Wood   (127  Fed. 

Rep.   887),   286. 
Dreydoppel    v.    Young    (14    Phila. 

226),  88,   107. 
Drummond    v.    Tinsley     (52     Mo. 

App.   10),   272,   333,   391,   392. 
Drummond  Tobacco  Co.  v.  Randle 

(114  111.  412),  143,  150. 
Du  Boulay  v.  Du  Boulay  (L.  R.  2 

P.    C.   430),   140. 
Ducat  V.  Chicago    (10  Wall.  410), 

350. 
Duden  v.  Maloy  (11  C.  C.  A.  119), 

212. 
Duer  V.  Corbin  Cabinet  Lock  Co. 

(149  U.  S.  216),  14. 
Duke   V.   Cleaver    (46    S.   W.   Rep. 

1128),   280. 
V.    Green     (16    Off.    Gaz.    1094), 

414,  424,  452. 
Dunbar  v.    Glenn    (42   Wis.    118), 

55,   129. 
Dunlap    V.    Schofield    (152    U.    S. 

244),  324. 
Dunlan  &  Co.  v.  Young   (74  N.  Y. 

Supp.  184),  373. 
Dunnachie  v.  Young  &  Sons   (Ct. 

Sess.  Cas.  4th  Ser.  X.  874).  51. 
Duwel    v.   Bohmer    (14    Off.     Gaz. 

270),  417. 
Duryea  v.   National     Starch    Mfg. 

Co.   (25  C.  C.  A.  139),  143. 
Dwight   v.   Hamilton     (113    Mass. 

175),   191,  198,  208. 

E 

Earl  of  Lytton  v.  Devey  (54  L.  J. 

Ch.    293),    225. 
Eastman   Co.   v.   Reichenbach    (20 

N.  Y.  Supp.  110),  220,  222,  223. 


are  to  pages. 

Eastman   Co.   v.   Reichenbach    (79 

Hun    188),    220. 
Eckhart    v.    Consolidated   Milling 

Co.   (72  111.  App.  70),  274. 
Edelsten  v.  Edelsten  (1  DeG.  J.  & 
S.  185),  96,  256,  262,  271,  295, 
347,   351,   373,   402. 
V.  Vick  (11  Hare,  78),  76. 
Edison  v.   Hawthorne     (106    Fed. 
Rep.  172),  303. 
V.  Hawthorne   (48  C.  C.  A.  67), 

303. 
V.  Thomas  A.  Edison,  Jr.  Chem. 
Co.  (128  Fed.  Rep.  1013),  446. 
Edmonds   v.   Benbow     (Seton,    3d 
ed.,  905),  168. 
v.  Boston  (108  Mass.  549),  195. 
Edwards    v.    Dennis     (30    Ch.    D. 

454),  57. 
Eggers  V.  Hink   (63  Cal.  445),  93, 

127,    129. 
Einstein  v,  Sawhill    (61  Off.  Gaz. 
287),  453. 
V.    Sawhill    (64   Off.   Gaz.   1533), 

453. 
V.   Sawhill    (65   Off.   Gaz.   1918), 
60,  320,  331,  458. 
Eisel  V.  Hays   (141  Ind.  41),  217. 
Electro-Silicon  Co.  v.  Hazard    (2'J 
Hun,  369),  99,  110. 
v.  Levy   (59  How.  Pr.  469),  284. 
V.  Trask  (59  How.  Pr.  189),  110, 
284. 
Elgin    Butter    Co.    v.    Sands    (155 

111.   127),   155,   558. 
Elgin  National  Watch  Co.  v.  Love- 
land    (132  Fed.  Rep.  41),  159. 
V.    Illinois  Watch   Co.    (1),    (89 

Fed.  Rep.  487),  134,  272. 
V.  Illinois  Watch  Co.    (2),    (179 
U.  S.  665),  6,  7,  135,  159,  256, 
315,    446,    459. 
Elliott's   Appeal    (60  Pa.   St.   161), 

189. 
Ellis  V.  Zeilen,    (42  Ga.  91),  376. 
El  Modello  Cigar  Co.  v.  Gate  (25 
Fla.  886),  358,  366. 


Eme-Exp 


TABLE   OF  CASES. 


XXIX 


References 

Emerson  v.  Badger  (101  Mass.  82), 

52. 
Emery   v.   Bradley    (88   Me.   357), 

209. 
Empire    Typesetting    Machine    Co. 

V.   Linotype  Co.    (79   L.  T.  N. 

S.    8),    47. 
Employers'  Liability  Assur.  Corp. 

Ltd.    V.    Employers'    Liability 

Ins.  Co.   (16  N.  Y.  Supp.  397), 

20. 
England  v.  New  York  Publishing 

Co.    (8  Daly,  375),  139. 
Eno  V.  Dunn  (L.  R.  15  A.  C.  252), 

269,  371. 
Enoch  Morgan's  Sons  Co.  v.  Edler 

(Cox,  Manual,  714),  375. 
V.  Hunkele   (16  Off.  Gaz.  1092), 

381. 
V.   Schwachofer    (5  Abb.   Pr.   N. 

C.  265). 
V.   Troxell    (89  N.   Y.   292),   243, 

252,  276. 
V.  Wendover  (43  Fed.  Rep.  420), 

103,  276. 
V.  Whittier-Coburn  Co.  (118  Fed. 

Rep.  657),  288. 
Enterprise    Mfg.    Co.    v.    Landers, 

Frary  &  Clark  (124  Fed.  Rep. 

923),  277. 
V.   Landers,  Frary  &  Clark    (65 

C.  C.  A.  587),  277. 
E.  Regensburg  &  Sons  v.  Juan  J. 

Portuondo      Cigar     Mfg.      Co. 

(136  Fed  Rep.  866),  243,  245. 
Erlinger  v.  Bouceau    (51  111.  94). 
Erwin  v.  Hayden    (43  S.  W.  Rep. 

610),  215. 
Estcourt  V.  The  Escourt  Hop  Es- 
sence Co.  (31  L.  T.  N.  S.  567), 

69. 
Estes  V.  Leslie  (1),  (27  Fed.  Rep. 

22),   168. 
V.  Leslie  (2),  (29  Fed.  Rep.  91), 

168,    283. 


are  to  par/es. 

Estes   V.    Williams    (21    Fed.    Rep. 

189),   17,  21,   24. 
V.    Worthington    (1).     (22    Fed. 

Rep.    882),   173,   379. 
V.    Worthington    (2),    (30    Fed. 

Rep.  465),  338. 
V.    Worthington    (3),     (31     Fed. 

Rep.  154),  168. 
Eureka  Fire   Hose   Co.   v.   Eureka 

Rubber  Mfg.  Co.   (60  Atl.  Rep. 

561),   99. 
Evans  v.  Smallcombe   (L.  R.  3  H. 

L.  249),  174. 
V.  Von  Laer  (32  Fed.  Rep.  153), 

93,   129,  260,  273,  274. 
Exchange    Bank    v.    Wichita    Cat- 
tle   Co.    (61    Fed.    Rep.    190), 

396. 
Ex    parte     Adam     Roth     Gro.    Co. 

(62  Off.  Gaz.  315),  451.  454. 
Adriance,    Piatt   &   Co.    (20   Off. 

Gaz.  1820),  456. 
Alden    (15    Off.    Gaz.    389),    417. 
American    Lead    Pencil    Co.    (61 

Off.  Gaz.  151),  458. 
Anti-Adulteration     League      (86 

Off.    Gaz.    1803),    447. 
Bassett    (55  Off.  Gaz.  997),  447. 
Bloch  &  Co.    (40  Off.  Gaz.  443), 

417,    450,    455. 
Brand    Stove   Co.    (62   Off.    Gaz. 

588),    90. 
Brigham   (20  Off.  Gaz.  891),  94, 

412. 
Bronson  Co.  (87  Off.  Gaz.  1782), 

90,    448. 
Buffalo-Pitts    Co.    (89    Off.    Gaz. 

2069),   448,  449,    456,   462. 
Butler    (87  Off.  Gaz.  1781),  102. 
Caire  (15  Off.  Gaz.  248),  289,  420. 
Capitol  City  Dairy  Co.   (83  Off. 

Gaz.  295),  94. 

Cigar    Makers'    Association    (16 
Off.  Gaz.  958),  56,  419. 

C.  G.  Hainline  &  Co.  (58  Off  Gaz. 
947),  425. 


XXX 


TABLE   OF  CASES. 


Ex  parte — Cia-Lor 


References 

Ex    parte    Clark-Jewell-Wells    Co. 

(S3   Off.   Gaz.   915),   451. 
Claire  (15  Off.  Gaz.  248).  420. 
Coats    (16  Off.  Gaz.  544),  419. 
Cohn    (1),    (16    Off.    Gaz.    680), 

417. 
Cohn  (2),  (16  Off.  Gaz.  680),  89, 

94,  417. 
Consolidated  Fruit  Jar   Co.    (16 

Off.   Gaz.   679),  414,   420. 
Coon    (58    Off.    Gaz.    946),    454, 

457. 
Creedmore     Cartridge    Co.     (56 

Off.   Gaz.   1333),   420,   456. 
Davids  &  Co.   (16  Off.  Gaz.  94), 

411,  417,  419,  420. 
Dawes  &  Fanning    (1   Off.   Gaz. 

27),   418. 
Diamond      Laboratory    Co.     (44 

MSS.  D.  19),  425. 
Dr.    Earter    Med.    Co.    (106    Off. 

Gaz.  1779),  293. 
Egyptian  Cigarette  Co.    (85  Off. 

Gaz.  1905),  101. 
Eldredge  Co.  (55  Off.  Gaz.  1278), 

425. 
Ervin  A.  Rice  Co.,  (83  Off.  Gaz. 

1207),  88. 
Fairchild  (21  Off.  Gaz.  789),  421. 
Farnum  &  Co.  (18  Off.  Gaz.  412), 

81,   130,   418. 

F.  H.   Gilson   Co.    (83   Off.   Gaz. 
1992),  448. 

Foley  &  Co.  (87  Off.  Gaz.  1957), 

99,   293. 
Foss  (2  DeG.  &  J.  230),  25,  104. 
Frieberg  &  Workum  ( 20  Off.  Gaz. 

1164),  5,  456. 
Gale    Mfg.    Co.     (85     Off.     Gaz. 

1907),  463. 
George  B.  Hurd  &  Co.    (59  Off. 

Gaz.  1763),  457. 

G.  F.  Heublein  &  Bro.    (87  Off. 
Gaz.  179),  88. 

Grand  Rapids  School  Furniture 

Co.    (87  Off.  Gaz.  1957),  103. 
Grove   (67  Off.  Gaz.   1447),  455. 


are  to  pages. 

Ex  parte  Guenther  Milling  Co.  (86 

Off.   Gaz.    1986),   91. 
Halliday     Bros.     (16     Off.    Gaz. 

500),    418. 
Hampden    Watch   Co.     (81     Off. 

Gaz.  1282),  102. 
Hance    Bros    &   White    (87    Off. 

Gaz.  698).  89. 
Hendley  (72  Off.  Gaz.  1654),  456. 
Henderson  (85  Off.  Gaz.  453),  85, 

92. 
Heyman   (18  Off.  Gaz.  922),  101. 
H.    J.    Heinz    Co.    (62    Off.    Gaz. 

1064),    425. 
Holophane    Glass    Co.    (100    Off. 

Gaz.   450),  81. 
Horlick's  Food  Co.   (84  Off.  Gaz. 

1870),   92. 
Hudson   (55  Off.  Gaz.  1401),  452. 
Hutchins    (100    Off.    Gaz.    1330), 

293 
Indiana  Bicycle  Co.  (72  Off.  Gaz. 

654),   105. 
J.  D.  Richards  &  Sons  (54  MSS. 

D.   425),   45L 
Keystone  Chamois  Co.   (101  Off. 

Gaz.  3109),   293. 
King    (46   Off.  Gaz.   119),  417. 
King  (Comm.  Dec.  1870,  p.  109), 

411. 
Kinney   (72  Off.  Gaz.  1349),  103, 

151,    454. 
Kipling   (24  Off.  Gaz.  899),  455. 
Kirker,  Greer  &  Co.   (Ltd.),  (37 

MSS.   D.   392),  454. 
Knapp    (16  Off.    Gaz.   318),  418. 
Krusius     Bros.      (82     Off.     Gaz. 

1687),  88. 
Langdon  (61  Off.  Gaz.  286),  412, 

447. 
Lawrence    (44  L.   T.  N.    S.   98), 

22,  334. 
Lazarus,  Schwarz  &  Lipper   (64 

Off.   Gaz.   1396).   451,  454. 
Lee    &    Shepard    (24     Off.     Gaz. 

1271),  456. 
Lorenz   (89  Off.  Gaz.  2067),  103. 


Ex  parte— Lyo-Wei 


TABLE   OF  CASES. 


XXXI 


References 

Ex  parte  Lyon,  Dupuy  &  Co.    (28 

Off.  Gaz.   191).  60,  411,  457. 
Lutz    (33   Off.   Gaz.   1389),  412. 
Mahn  (82  Off.  Gaz.  1210),  427. 
Marsching  &   Co.    (15   Off.   Gaz. 

294),   90,   418. 
Martin    (89  Ofi.   Gaz.   2258),   71, 

455. 
McCabe  (46  Fed.  Rep.  363),  391. 
Mclunerney    (85  Off.  Gaz.   149), 
239. 
Moodie   (28  Off.  Gaz.  1271),  •il2, 

413. 
Muir    (87    Off.    Gaz.    357),    451. 
Nave   &   McCord    Merc.   Co.    (86 

Off.  Gaz.  1985),  90. 
Olive   Wheel    Co.    (84    Off.    Gaz. 

1871),  93. 
Oliver    (18    Off.'  Gaz.    923),    129. 
Orcutt  &  Son   (8  Off.  Gaz.  276), 

425. 
Pace,  Talbott  &  Co.  (16  Off.  Gaz. 

909).    420. 
Palmer    (58  Off.  Gaz.  383),  425. 
Palmer    (Comm.    Dec.    1871,    p. 

289),  417. 
Parlter    (13   Off.   Gaz.  323),   425. 
Parker,    Holmes  &  Co.    (85  Off. 

Gaz.    287),    90. 
Pearson   Tobacco    Co.     (85    Off. 

Gaz.    287).    71.    94. 
Peper    (16   Off.   Gaz.   678),  419. 
Punnett   (L.  R.  16  Ch.  D.  226), 

195 
Rail    (85   Off.   Gaz.   453).   93. 
Roasted    Cereals    Co.    (57   MSS. 

D.  455),  447. 
Roy    (54    Off.    Gaz.    1267),    446, 

452. 
Ruckstuhl     (56    Off.    Gaz.    927), 

425. 
Safety  Powder  Co.  (16  Off.  Gaz. 

136).  94,  417. 
Schmachtenberg  Bros.   (51  MSS. 

D.    204),    455. 
SchoUenberger    (96   U.   S.   369), 

350. 


are  to  pages. 

Ex  parte  Schumacher  &  Ettlinger 

(1),    (19    Off.   Gaz.   791),   412. 
Schumacher      &    Ettlinger    (2), 

(22  Off.  Gaz.  1291),  412,  413. 
Smith    (1),    (16   Off.   Gaz.   679), 

418.  420. 
Smith    (2),    (16    Off.   Gaz.   679), 

92.  418. 
Smith    (3),    (16   Off.   Gaz.   764), 

92,   417. 
Sodafoam    Baking    Powder    Co. 

(96  Off.  Gaz.  1239),  293. 
Spayd  (86  Off.  Gaz.  631),  91. 
Spinner    (35   MSS.   D.   15),   446, 

447. 
Standard   Fashion   Co.    (89    Off. 

Gaz.  189),  451. 
Stokes    (64    Off.    Gaz.    437).    94, 

418. 
Strasburger  &  Co.   (20  Off.  Gaz. 

155),  95,  412,  421,  454,  455,  457. 
Stuhmer   (86  Off.  Gaz.  181),  85, 

90,  119. 
Sullivan  &  Burke    (16  Off.  Gaz. 

765).  420. 
Sutton    (108  Off.  Gaz.  291).  293.. 
Thaddeus  Davids  &  Co.   (16  Off. 

Gaz.  94),  426. 
Thompson,  Derby  &  Co.  (16  Off. 

Gaz.  137).  95.  418. 
Tietgens    &   Robertson    (87    Off. 

Gaz.    2117),   100.    4.35. 
United   States  Playing  Card  Co. 

(82  Off.  Gaz.    1209).    104.  426, 

427. 
Velvril   Co.    (84   Off.    Gaz.    807), 

81.  448. 
Vogel  &  Son  (99  Off.  Gaz.  2321), 

293. 
Waeferling    (16   Off.    Gaz.   764), 

90.  412,  418. 
W.  B.  Belknap  &  Co.    (105  Off. 

Gaz.   745),  293. 
Weil    (83  Off.   Gaz.   1802).   96. 

Weisert  Bros.  (16  Off.  Gaz.  680), 
420. 


xxxu 


TABLE   OF  CASES. 


Fab-Fla 


References 

Ex    parte    Wiesel     (36    Off.    Gaz. 

6S9),    412,    413. 
Willard  Chem.  Co.  (107  Off.  Gaz. 

1972),  293. 
Wolf    (80    Off.    Gaz.    1271),    91, 

455. 
W.  Simpson  &  Sons  (10  Off.  Gaz. 

334),  425. 
Yale  &  Towne  Mfg.  Co.   (81  Off. 

Gaz.  801),  96. 
Young    (Seb.    537),    25,   297. 
Zwack  &  Co.  (76  Off.  Gaz.  1855), 

449,  804. 


F 

Faber  v.  D'Utassey    (11  Abb.  Pr. 

N.  S.  399),  271. 
V.  Faber    (49    Barb.    357),    100, 

143. 
V.   Hovey    (Codd.   Dig.  79),  104. 
Fairbanks    v.    Jacobus    (Fed.  Case 

No.  4608),  90,  121,  243,  254. 
Falk    V.    American    West     Indies 

Trading  Co.    (180  N.  Y.  445), 

34. 
Falkinburg  v.  Lucy    (35  Cal.  52), 

127. 
Farben-fabriken   T.    M.   K.     (7    R. 

P.   C.   439),  94. 
Farina    v.    Cathery    (L.    -T.    N.    C. 

1867,  p.   134),  338. 
V.    Silverlock    (1    K.    &   J.    509), 

16,   259,   260,   333. 
Farmers'     Loan    &    Trust    Co.     v. 

Farmers'    Loan    &    Trust    Co. 

of  Kansas  (1  N.  Y.  Supp.  44), 

151,   168. 
Farmers  Mfg.  Co.  v.  W.  R.  Harri- 
son &  Co.   (96  Off.  Gaz.  2062), 

453. 
Farr  v.  Pearce   (3  Madd.  74),  191. 
Featherstonhaugh  v.  Fenwick    (17 

Ves.    298),    188. 
V.    Turner    (25   Beav.   382),    205. 
Feder   v.   Benkert    (76   Fed.    Rep. 

613),   794. 


are  to  pages. 

Feder    v.    Brudno    (5    Ohio    N.    P. 

275),    102. 
Fennessy  v.  Clark    (L.  R.  37   Ch. 

D.  184),   359. 

V.    Day    (55    L.    T.    N.    S.    161), 

375,    404. 
V.  Rabbits    (56  L.  T.   138),  382. 
Ferguson  v.  Davol  Mills  (2  Brewst. 

314),  5. 
Fetridge  v.  Merchant   (4  Abb.  Pr. 

156),  97. 
V.    Wells    (4   Abb.    Pr.    144),    69, 

88,   127. 
Field   V.   Lewis    (Seton,    4th    ed., 

237),   375,   402. 
Filkins   v.    Blackman    (Fed.   Case 

No.  4786),   24,  30,  31,  32,  208. 
Filley   v.    Child    (Fed.     Case     No. 

4787),   79,   98. 
V.  Fassett   (44  Mo.  173),  98,  99, 

242,   256,  262,  374,  391. 
Findlay  v.  Carson   (97  Iowa  537), 

198. 
Finger    v.    Hahn     (42     N.   J.   Bq. 

597),    209. 
Finley  Rubber-Varnish  &   Enamel 

Co.    V.    Finley    (32    Atl.    Rep. 

740),   229. 
Fischer  v.  Blank   (138  N.  Y.  244), 

88,  119,  249. 
V.  Hayes  (6  Fed.  Rep.  63),  398. 
Fish     Bros    Wagon    Co.     v.     Fish 

Bros   Mfg.    Co.    (1),    (87   Fed. 

Rep.   201),  32,  336. 
V.  Fish  Bros.  Mfg.  Co.    (2),    (37 

C.   C.   A.   146),   13,   32. 
V.    LaBelle   Wagon   Works    (82 

Wis.  546),  32,  52. 
Fisher   &   Co.   v.   The   Apollinaris 

Co.   (L.  R.  10  Ch.  D.  297),  46. 
Fisk  V.  Mahler  (54  Fed.  Rep.  528), 

381. 
Fite   V.    Dorman    (57    S.   W.   Rep. 

129),    212. 
Flagg  Mfg.  Co.  V.  Hoi  way   (59  N. 

E.  Rep.   667),   147,  243,  254. 


Fla-Geb 


TABLE  OF  CASES. 


XXXIU 


lieferences 

Flavel  V.  Harrison  (10  Hare,  467), 

69,  73. 
Fleischmann   v.    Schuckmann    (62 

How.  Pr.  92).  135,  373. 
V.  Starkey    (25  Fed.   Rep.   127), 

243,  249. 
Fleming  v.  Newton  (L.  R.  1  H.  L. 

C.  363),  46. 
FoUet  V.  Jeffreyes    (1   Sim.  N.   S. 

1),  220. 
Ford  V.  Foster    (L.  R.  7  Ch.  App. 

611),  69,  72,  99,  114,  170.  181, 

374. 
Foster  v.  Blood  Balm  Co.    (77  Ga. 

216),  299. 
V.    Webster    Piano    Co.     (13    N. 

Y.  Supp.  338),  143,  291. 
Fotheringham  v.  Express  Co.    (36 

Fed.   Rep.  252),  357. 
Fowle  V.  Park  (131  U.  S.  88),  219. 

V.  Spear  (7  Pa.  L.  J.  176).  105. 
Fralich  v.  Despar  (165  Pa.  St.  24), 

222. 
Franck  v.  Frank  Chicory  Co.    (95 

Fed.  Rep.  818),  249. 
Frank  v.  Sleeper   (150  Mass.  583), 

24,    297,    299. 
Frankau    v.    Pope     (11     Cape     of 

Good    Hope    209),    299. 
Frazer   v.    Frazer   Lubricator    Co. 

(121    111.   147),   24,   145,    208. 
Frazier    v.    Bowling     (18    Ky.    L. 

Rep.   1109).   68,  377. 
French  v.  Alter  &  Julian  Co.    (74 

Fed.    Rep.    788),    380. 
Frese    v.    Bachof    (Fed.    Case    No. 

5110),    91.    247.    377. 
Frohman  v.   Hopkins   Amusement 

Co.    (103    111.    App.    613).    171. 
V.  Miller  (29  N.  Y.  Supp.  1109), 

98,    170. 
V.  Payton   (68  N.  Y.  Supp.  849), 

171. 
Frost  V.  Rindskopf    (42  Fed.  Rep. 

408).   289. 
Ft.  Stanwix  Canning  Co.  v.  Wm. 

McKinley     Canning     Co.      (63 

N.   Y.   Supp.  704),   287. 


are  to  pages. 

Fuller  V.  Huff   (43  C.  C.  A.  453), 

91,   271. 
V.   Huff   (99  Fed.  Rep.  439),  91, 

272. 
Full  wood    V.    Fullwood     (1),     (W. 

N.,   1873,  p.  93),   272. 
Fulton  V.  Sellers    (4  Brewst.  42), 

23,    72,    96,    97,    141. 
Funke    v.    Dreyfus    (34    La.   Ann. 

80),   97. 


G 

Gabriel    v.    Sicilian    Asphalt    Co. 

(1),     (52    N.    Y.    Supp.    722), 

128. 
V.  Sicilian  Asphalt  Co.   (2),   (56 

N.    Y.    Supp.    30),   129. 
Gage    V.     Canada    Pub.    Co.     (11 

Can.    Sup.    Ct.    306),    28,    97. 

145,  373. 
Gage-Downs   Co.    v.    Featherbone 

Corset  Co.  (83  Fed.  Rep.  213), 

98,  136. 
Gail     V.     Wackerbarth     (28     Fed. 

Rep.    286),    249,    391. 
Gaines   v.    Sroufe    (117    Fed.   Rep. 

965),    365. 
Gaily  V.   Colts'  Patent  Fire  Arms 

Mfg.   Co.    (30   Fed.  Rep.   118), 

79. 
Gannert  v.  Rupert   (1),   (119  Fed. 

Rep.    221),    169. 
V.    Rupert     (2),     (62    C.    C.    A. 

594),    98,    169. 
Gardner  v.  Bailey   (Fed.  Case  No. 

5221),    288. 
Garrett   v.    T.    H.    Garrett    &    Co. 

(24    C.    C.    A.    173).    144.    146, 

155,    294,    375. 

Garretson    v.    Clark     (111    U.    S. 
120),    383. 

Gartside    v.    Outram     (3    Jur.    N. 
S.   39).  220. 

Gebbie   v.    Stitt    (31    N.   Y.    Supp. 
102),    129. 


XXXIV 


TABLE   OF  CASES. 


Gee-Gor 


References  are  to  pages. 


Gee  V.  Pritchard  (2  Swanst.  402), 

46.    225. 
Gegg  V.   Bassett    (3   Ont.   L.   Rep. 

263),    23. 
General    Electric    Co.    v.    Re-new 

Lamp     Co.     (128      Fed.     Rep. 

154),    274,    299,    378. 
George    v.    Smith     (52    Fed.    Rep. 

830).    63.    99.   269,    270.    374. 
George    T.    Stagg    Co.    v.    Taylor 

(95    Ky.    651),    102,    299,    304. 

323. 
Geron   v.    Gartner    (47   Fed.    Rep. 

467),    297. 
Gessler  V.  Grieb    (80  Wis.   21).  91. 
G.    G.    White    Co.    v.    Miller     (50 

Fed.  Rep.  277).  16,  98,  286. 
Giblett  V.  Read    (9  Mod.  459).  28. 

104,  335. 
Gilka    V.    Mihalovitch      (50     Fed. 

Rep.    427),    172. 
Gillett  V.   Lumsden    (4    Ont.   Law 

Rep.    300).    89,    176. 
Gillis    V.    Hall     (1),     (2    Brewst. 

342),    145.    792. 
V.    Hall    (2),    (3   Brewst.    509), 

141.    142. 
Gillott    V.    Esterbrook     (47    Barb. 

455).    175.    179,   295,    298,    373. 

793. 
V.    Kettle     (3    Duer,    624),    276. 

296,    298.    373. 
Oilman  v.  Dwight  (13  Gray,  356), 

191. 
V.   Hunnewell    (122  Mass.   139), 

13,  89,   140,   143,   253,  266. 
Ginter  v.  Kinney  Tobacco  Co.  (12 

Fed.  Rep.   782).   70,  95. 
Giron   v.    Gartner    (47   Fed.    Rep. 

467).    299. 
Glen    Cove   Mfg.    Co.    v.   Ludeling 

(22   Fed.   Rep.   823),   102.   286, 

321,    328,    354,    365,    372.    413, 

459,   460. 
Glen  &  Hall  Mfg.  Co.  v.  Hall   (61 

N.    Y.    226),    179.    297. 


Glendon    Iron    Co.    v.    Uhler    (75 

Pa.   St.   467),   90.   128. 
Glenny  v.  Smith    (2  Drew.  &  Sm. 

47G).    256. 
Globe-Wernicke   Co.  v.  Brown    (121 
Fed.    Rep.    185),    99. 
V.  Brown  &  Besly    (57  C.  C.  A. 

344),    255. 
V.    Fred    Macey    Co.    (56    C.    C. 
A.    304).    255. 
Glotin    V.    Oswald    (65    Fed.    Rep. 

151),    328,    350. 
Gluckman    v.    Strauch    (91    N.    Y. 

Supp.    223),   68. 
Godillot  V.  American   Grocery  Co. 
(71   Fed.   Rep.    873).   299. 
V.  Harris    (81  N.  Y.   263),   15. 
V.  Hazard  (1),   (44  N.  Y.  Super. 

Ct.    427),    4,    57. 

V.  Hazard    (2),    (81  N.  Y.  263), 

92. 

Goldstein     v.     Whelan     (62     Fed. 

Rep.   124),   102,   329,   379,   401. 

Goodfellow    V.    Prince    (L.    R.    35 

Ch.    D.    9),    313. 
Goodlet    V.    Railroad     (122    U.    S. 

391),    350. 
Goodman    v.    Bohls    (3    Tex.    Civ. 
App.    183),    124. 
V.  Henderson    (58  Ga.  567).  189. 
V.    Meriden    Britannia    Co.     (50 
Conn.   139),   22. 
Goodyear    Co.    v.    Goodyear    Rub- 
ber  Co.    (128    U.    S.    598),   38. 
41.   90.   153. 
Goodyear  Rubber  Co.   v.   Day    (22 
Fed.   Rep.   44),   79,  153,  380. 
V.      Goodyear's      Rubber      Mfg. 
Co.    (21    Fed.   Rep.    276).   150, 
153. 
Gorham   Co.   v.   White    (14    Wall. 

511),  392. 
Gorham  Mfg.  Co.  v.  Emery-Bird- 
Thayer  Dry  Goods  Co.  (92 
Fed.  Rep.  774).  369,  375,  398. 
V.  Emery-Bird-Thayer  Co.  (43 
C.    C.   A.    511),   257. 


Gor-Har 


TABLE   OF  CASES. 


XXXV 


References 

Gormley    v.    Bunyan     (138    U.    S. 

623),    391. 
Gouraud   v.   Trust    (3    ilun,    627), 

100,  273. 
Gout   V.   Aleploglu    (6   Beav.    69), 

119. 
Graham   v.    Plate    (40    Cal.    593), 

359,    383. 
Gravel    Roofers'    Exch.    v.    Turn- 
bull    (64    Off.    Gaz.    441),    335. 
Gravely  v.  Gravely    (42  Fed.  Rep. 

265),  321,  328,  350,  365,  461. 
Gray      v.       Taper-Sleeve      Pulley 

Works     (16    Fed.    Rep.    436), 

331. 
Greacen   v.    Bell    (115    Fed.    Rep. 

5o3),  30. 
Green   v.   Rooke    (W.   N.,  1872,   p. 

49),    90. 
Greene    v.    Woodhouse     (38     Off. 

Gaz.    1891),    122. 
Gregory     v.     Spieker     (110     Cal. 

150),  214,  215. 
Griggs,  Cooper  &  Co.  v.  Erie  Pre- 
serving   Co.     (131    Fed.    Rep. 

359),   20,   53,   285,   365. 
Grillon    v.    Guenin    (W.    N.,    1877, 

p.   14),   104,   115,   376. 
Grimm  v.  Walker   (45  Iowa  106), 

198. 
Grow  v.  Seligman   (47  Mich.  607), 

148,    218. 
Guilhon    v.    Undo     (9    Bos.    605), 

369. 
Guinness  v.  Heap   (Seb.  617),  285. 
v.   Ullmer    (10   L.   T.   127),   242, 

259,   265. 
G.   W.   Cole   Co.   V.   American   Ce- 
ment &  Oil  Co.    (65   C.  C.  A. 

105),    256. 

H 

Hagen    v.    Beth     (118    Cal.    330), 

380. 
Hagg    V.    Darley     (47    L.    J.    Ch. 

567),  222. 


are  to  pages. 

Hainque   v.    Cyclops     Iron   Works 

(136    Cal.    35),   284,    528. 
Hall    V.    Barrows     (4    DeG.    J.    & 

S.    150),   13,   58,   97,   138,   179. 

189,    194,    265,    268,    297,    299, 

374. 
V.   Hall    (20   Beavan   139),   188, 

193. 
Halsey  v.   Brotherhood    (45   L.   T. 

N.   S.   640),   47. 
Halstead    v.    Houston     (111    Fed. 

Rep.    376),    280,    304. 
Hammond  v.  Brunker   (9  R.  P.  C. 

301),   25,  181. 
V.   Douglas    (5   Ves.   539),   189. 
Hanford  v.  Westcott   (16  Off.  Gaz. 

1181),    100,    421,    459. 
Handy     v.     Commander     (49     La. 

Ann.  1119),  361,  372. 
Hanley    v.    Fidelity    Ins.    T.    &    S. 

Co.    (8  Pa.  Dist.  R.  207),  228. 
Hanna  v.   Andrews    (50   la.   462), 

191,   198. 
Hansen  v.   Siegel-Cooper  Co.    (100 

Fed.   Rep.   690),   268,  395. 
V.    Siegel-Cooper    Co.    (2),    (106 

Fed.    Rep.    691),    285. 
Hardy  v.  Cutter  (3  Off.  Gaz.  468), 

93,    143,    266. 
Hargraves    v.    Smith    (Seb.    338), 

351. 
Harper  v.   Holman    (84  Fed.  Rep. 

222),    340. 
V.  Lare   (93  Fed.  Rep.  989),  292. 
v.  Pearson   (3  L.  T.  N.  S.  547), 

335. 
Harper  &  Bros.  v.  Lare   (43  C.  C. 

A.   182),   292. 
Harris    v.    Brown     (202    Pa.    16), 

149. 
Harrington   v.    Libby    (Fed.    Case 

No.    6107),    113,    243. 
Harrison  v.  Taylor   (11  Jur.  N.  S. 

408),    256. 

Harson     v.     Halkyard      (46      Atl. 
Rep.    271),    143. 


XXXVl 


TABLE   OF  CASES. 


Har-HU 


References 

Hart   V.   Colley    (7   R.   P.   C.   93), 

268. 
Kartell   v.   Viney    (Fed,   Case   No. 

6158),    88. 
Hatchard   v.    Mege    (L.    R.    18    Q. 

B.   D.   771),   49,   335. 
Hansen  v.   Siegel-Cooper  Co.    (1), 

(106    Fed.    Rep.    690). 
V.    Siegel-Cooper    Co.    (2),    (106 

Fed.  Rep.   691),  101. 
H.  A.  Williams  Mfg.  Co.  v.  Noera 

(158    Mass.    110). 
Hawley     v.     Donnelly     (8     Paige, 

415),  401. 
Hay  &  Todd   Mfg.   Co.   v.    Querns 

Bros.    (86    Off.    Gaz.    1323),   7, 

453. 
Hazard  v.   Caswell    (1),    (57  How. 

Pr.   1),  297. 
V.  Caswell    (2),   (93  N.  Y.  259), 

26,  336. 
Hazelton    Boiler    Co.    v.    Hazelton 

Tripod    Boiler    Co.     (142     111. 

494),    59,    154,    156. 

Hazzopulo  V.   Kaufmann    (23   Sol. 

J.   819),   313. 
H.  B.  Chaffee  Mfg.  Co.  v.  Selchow 

(131   Fed.  Rep.   543),  90,  107. 
Heath  v.  Wright   (3  Wall.  Jr.  1), 

69,  101. 

Hecht  V.   Porter    (9   Pac.  C.  L.  J. 

569),    101,    268,    371. 
Hegeman    v.    Hegeman     (8    Daly 

1),   23,  25. 
V.    O'Byrne    (9   Daly,    264),   373, 

374. 
^-^     Heide  v.  Wallace  &  Co.    (135  Fed. 

Rep.   346),  42. 
V.     Wallace     &    Co.     (129     Fed. 

Rep.    649),    42. 
Heinisch's  Sons  Co.  v.  Boker   (86 

Fed.   Rep.    765). 
Heinz  v.  Lutz    (146  Pa.  592),  266. 
Helmbold  v.  H.  T.  Helmbold  Mfg. 

Co.   (53  How.  Pr.  453),  71,91. 


are  to  pages. 

Hennessy    v.     Braunschweiger     & 

Co.    (89    Fed.    Rep.    664),    16. 

60,    183,     320,     328,    365,     446, 

449,    459,   460,    462. 

V.    Budde    (82    Fed.    Rep.    541), 

398,   407. 
V.    Herrmann     (89     Fed.     Rep. 
669),    258,    259,    328,   329,   350, 
366,    461,    778. 
V.    Hogan     (6    W.    W.    &    A'B. 

Eq.    225),    275,    373. 
V.  Kennett   (Seb.  556),  369,  373. 
V.   Wheeler    (69   N.  Y.   271),  70, 

376. 
V.   White    (6  W.   W.   &  A'B.   Eq. 

216),    275,    373. 
V.    Wilmerding-Loewe    Co.     (103 
Fed.  Rep.   90),   366,  385. 
Herbert   v.   Dupaty    (42    La.    Ann. 

343),    188,    200,    206. 
Hetterman    v.    Powers     (102    Ky. 

133),   56,   569. 
Heublein     v.     Adams     (125     Fed. 

Rep.   782),   21,   58,   65,   98. 
Hickman  v.   Link    (116   Mo.   123), 

183. 
Hier  v.  Abrahams   (82  N.  Y.  519), 

103,   171,    287,   373. 
Higgins  V.  Dakin   (33  N.  Y.  Supp. 
890),    656. 
V.   Keuffel    (140  U.   S.  428),  424, 
425,   427. 
Higgins   Co.   v.   Higgins   Soap   Co. 
(144     N.     Y.     462),    144,     146, 
150,   156. 
Hildreth    v.     McCaul     (74    N.    Y. 
Supp.   1075),   400. 
V.     D.    S.     McDonald    Co.     (164 

Mass.    16),    253. 
V.    Sparks    Mfg.    Co.     (99    Fed. 
Rep.    484),    259,   340,   384. 
Hill    V.    Lockwood    (32   Fed.    Rep. 

389),   33,   55,   134,   337. 
Hilsen  v.  Libby   (44  N.  Y.  Super. 

Ct.   12),   54. 
Hilson    Co.    V.    Foster     (80    Fed. 
Rep.    896),    39. 


UiQ-H08 


TABLE  OF  CASES. 


XXXVll 


Hine    v.    Lart    (10    Jur.    106),    99, 

119,    334. 
Hinrichs   v.    Berndea    (Cox,    Man- 
ual,  594),   47. 
Hipgrave  v.  Case  (L.  R.  28  Ch.  D. 

356),    216. 
Hiram    Holt    Co.    v.    Wadsworth 

(41    Fed.    Rep.    34),    79,    83, 

102,    286. 
Hiram    Ricker    &    Sons    v.    Leigh 

(77   N.   Y.    Supp.    540).   274. 
Hiram    Walker    &    Sons    v.    Miko- 

las    (79    Fed.    Rep.    955),   137. 
Hires    v.    Hires    (6    Pa.    Dis.    R. 

285),    249. 
Hirsch  v.  Jonas    (L.  R.  3   Ch.   D. 

584),   56. 
Hirst   V.    Denham    (L.    R.    14    Eq. 

542),    101,    102,    103. 
Hitchcock   V.    Coker    (6   Ad.   &   E. 

428),  192. 
H.  Mueller  Mfg.  Co.  v.  A.  Y.  Mc- 

Donaly   &   Morrison   Mfg.   Co. 

(132    Fed.    Rep.    585),    380. 
Hoagland  v.  Segur   (38  N.  J.  Law 

237).    208. 
Hobbs   V.    Francais    (19    How.   Pr. 

567),    69. 
Hoff    V.    Tarrant    &   Co.    (71    Fed. 

Rep.   163),   24,   68. 
Hogg  V.  Kirby    (8  Ves.   215),  164. 
Hohner    v.    Gratz     (1),     (50    Fed. 

Rep.    369),    378,    397. 
V.    Gratz     (2),     (52    Fed.    Rep. 

871),   145. 
Holbrook    v.    Nesbitt     (163    Mass. 

120),  198,   206,   211. 
Hollis   V.    Shaffer    (38   Kas.   492), 

200. 
Holloway  v.   Holloway    (13   Beav. 

209),   140,    144,   376. 
Holmes,    Booth     &     Haydens     v. 

Holmes,     Booth     &      Atwood 

Mfg.  Co.    (37  Conn.  278),  144. 

148,    156,    256. 
Holt   V.   Menendez    (23   Fed.   Rep. 

869),   372. 


References  are   to  pages. 

Holzapfel's  Composition  Co.  v. 
Rahtjen's  American  Compo- 
sition  Co.    (183    U.   S.   1),   74. 

Hoosier  Drill  Co.  v.  Ingels  (14 
Off.    Gaz.    785),    412,    421. 

Hondayer,  Matter  of  (150  N.  Y. 
37),  192. 

Hopkins  Amusement  Co.  v.  Froh- 
man    (202   111.   541),   171. 

Hopkins  v.  Hitchcock  (14  C.  B. 
N.   S.   65),   297,   299. 

Horlick's  Food  Co.  v.  Elgin  Milk- 
ine  Co.   (56  C.  C.  A.  544),  92. 

Hornbostel  v.  Kinney  (110  N.  Y. 
94),   104. 

Horton   Mfg.   Co.   v.   Horton   Mfg 

Co.    (18    Fed.    Rep.    816),    24, 

210,  21L 
Horwich    v.    Walker-Gordon    Lab- 
oratory   Co.     (205     III.     497), 

557. 
Hostetter  v.  Adams  (10  Fed.  Rep. 

838),    88,    249,    253,    294,    302, 

303. 
V.    Anderson    (1   W.   W.   &  A'B. 

Eq.    7),    274,    294. 
V.    Becker    (73    Fed.   Rep.   297), 

285. 
V.    Bower    (74    Fed.    Rep.    235), 

274,   393. 
V.     Brueggeman-Reinert    Distill- 
ing  Co.    (46    Fed.    Rep.    188), 

273,    274. 
V.    Brunn    (107   Fed.    Rep.   707), 

3G9. 
V.    Comerford     (97     Fed.     Rep. 

585),    274,    393. 
V.  Conron    (111  Fed.  Rep.  737), 

273. 
V.    E.    G.    Lyons    Co.     (99    Fed. 

Rep.  734),  372. 
V.    Fries     (17    Fed.    Rep.    620), 

5,   273. 
V.     :\Iartinoni     (110     Fed.     Rep. 

524),   274. 


xxxvm 


TABLE   OF  CASES. 


Hos-Int 


References 

Hostetter    v.    Sommers     (84    Fed. 

Rep.    333),    274. 
V.    Van    Vorst     (62     Fed.     Rep. 

600),   277,   405. 
V.     Vowinkle     (Fed.     Cas.     No. 

6714),   285,   376,   383,   394. 
V.  Wm.  Schneider  Co.   (107  Fed. 

Rep.    705),    273. 
Houchens    v.    Houchens     (95    Md. 

37),  377. 
Hovenden    v.    Lloyd     (18    W.    R. 

1132),    28. 
Howard    v.    Henriques    (3    Sandf. 

725),  311. 
V.    Taylor    (90    Ala.    241),     188, 

214. 
Howe    V.    Howe    Sewing    Machine 

Co.    (50    Barb.    236),   141. 
V.  McKernan    (30  Beavan,  547), 

62,   395,   396. 
V.    Searing    (10    Abb.    Pr.    264), 

24,  198. 
Howe   Scale   Co.   v.   Wyckoff,   Sea- 
mans   &   Benedict    (198   U.    S. 

118),  60,  154. 
Hoxie  V.  Chaney  (143  Mass.  592), 

24,    25,    70,    96,    148,    193,    197, 

198. 
Hoyt    V.    Holly    (39    Conn.    326), 

19L 
V.    Hoyt    (143    Pa.    St.    623),    4, 

14,    18. 
V.  J.  T.  Lovett  Co.    (17  C.  C.  A. 

652),    91. 
Hubbard  v.  Miller    (27  Mich.  15), 

200,  208. 
Hubbuck    V.    Wilkinson     (C.    A.), 

(L.  R.   1898,  12  Q.  B.  86),  49. 
Hudson  V.  Osborne    (39  L.  J.  Ch. 

79),    25,    178,    179,    188,    311. 
Hughes  V.  Northern  Pac.  Ry.  Co. 

(18   Fed.   Rep.   106),    367. 
Humphreys      Homeopathic     Medi- 
cine   Co.    V.    Hilton    (60    Fed. 

Rep.    756),    297. 
Humphreys'   Specific  Med.  Co.   v. 


are  to  pages. 

Wenz    (14   Fed.  Rep.   250),  5, 

Co,   91,   285,   296. 
Hunt  V.   Maniere   (34  Beav.  157), 

339. 
Hurricane    Pat.     Lantern     Co.    v. 

Miller    (56  How.  Pr.  234),  291. 
Hutchinson  v.  Blumberg   (51  Fed. 

Rep.    829),   104,    377,   404. 
V.    Covert    (51    Fed.    Rep.    832). 

104,    288. 
Huwer     v.     Dannehoffer     (82     N. 

Y.   499),   26,   336. 
Kygeia  Distilled  Water  Co.  v.  Hy- 

geia  Ice  Co.    (72   Conn.   64*6), 

100. 
Hygienic   Fleeced   Underwear    Co. 

V.  Way    (133  Fed.  Rep.   245)," 
368. 
V.  Way  (C.  C.  A.,  137  Fed.  Rep. 

592),  102,  292. 
Hymen    v.     Solis    Cigar    Co.     (4 

Colo.   App.   475),   58,   63. 


Illinois  Watch   Case  Co.  v.  Elgin 

Nat.   Watch   Co.    (35   C.  C.  A. 

237),     46,     89,     135,    272,    315, 

331,   446. 
Improved   Fig   Syrup   Co.   v.   Cali- 
fornia Fig  Syrup  Co.   (54  Fed. 

Rep.    175),    88,    122,   373. 
Independent  Baking  Powder  Co.  v. 

Boorman  (130  Fed.  Rep.  726), 

378. 
India     Rubber     Co.      v.      Rubber 

Comb    Co.     (45    N.    Y.    Super. 

Ct.    R.    258),    145,    296. 
Indurated     Fibre     Co.     v.     Amos- 

keag  Fibre  Co.   (37  Fed.  Rep. 

695),    91,    109. 
Industrial    Mutual    Deposit    Co.   v. 

Central    Mutual     Deposit    Co. 

(66   S.  W.   Rep.   1032),   151. 
Ingram    v.     Stiff     (5     Jur.    N.     S. 

947),    168. 
Insurance   Oil   Tank   Co.   v.   Scott 

(33  La.  Ann.   946),  55,  lOL 


Int-Jos 


TABLE   OF  CASES. 


XXXIX 


References 

International   Silver  Co.   v.   Rodg- 

ers     Bros.     Cutlery    Co.     (ioG 

Fed.  Kep.  101b),  287. 
V.    Simeon   L.   &   Geo.   H.   Rodg- 

ers   Co.    (110  Fed.   Rep.   950), 

145,    336. 
V.    Wm.    G.     Rogers    Co.     (113 

Fed.    Rep.    526),    145, 
International    Society    v.    Interna- 
tional Society    (59  N.  Y.  Supp. 

785),    272. 
Investor    Pub.    Co.     v.     Dobinson 

(1),    (72   Fed.  Rep.   603),  150, 

151,   156. 
V.  Dobinson   (2),    (82  Fed.  Rep. 

56),    45,    143,    168. 
Iowa    Seed    Co.    v.    Dorr    (70    la. 

481),    143,    189. 


Jackson     v.     Byrnes     (103     Tenn. 

698),  198. 
Jacoby    &    Co.    v.    Lopez     (23    Off. 

Gaz.    342),    421,    459. 
Jaeger's  Sanitary  W.  S.  Co.  v.  Le 

Boutilier    (47    Hun,    524),    21. 
Jaffe   V.    Evans   &   Sons,    Ltd.    (75 

N.    Y.    Supp.    257),    109. 
James    v.    James     (L.    R.    13    Eq. 

421),  92,  144,  219,  368. 
Janney  v.  Pan-Coast  Ventilator  & 

Mfg.  Co.   (128  Fed.  Rep.  121), 

184,  287. 
V.   Pan-Coast  Ventilator  &  Mfg. 

Co.    (2),   (131  Fed.  Rep.  143), 

400. 
Jaros   Hygienic  Underwear   Co.   v. 

Simons    (49    Fed.    Rep.    276), 

45. 
Jaros    Underwear    Co.    v.    Fleece 

Underwear  Co.    (60  Fed.  Rep. 

622),    91,    340. 
Jay   V.   Ladler    (6   R.   P.  C.   136). 

124.    268. 
Jefferson     v.     Markert     (112     Ga. 

498),   209. 


are   to  pages. 

Jerome    v.     Johnson     (59    N.    Y. 

Supp.   859),   264,    282. 
Jennings     v.     Johnson     (37     Fed. 

Rep.   364),  24,   124. 
Jewish   Colonization  Ass'n   v.   Sol- 
omon    (125    Fed.    Rep.    994), 

334. 
J.   G.   Mattingly   Co.   v.   Mattingly 

(17  Ky.  L.  Rep.  1),   35. 
V.    Mattingly    (96    Ky.    430),   23, 

24,    35. 
Job  Printers'  Union  of  Chicago  v. 

Kinsley    (107    111.    App.    654)'. 

262. 

John   Batt   &   Co.   v.    Dunnett    (L. 

R.    1899    A.    C.    428),   21. 
Johnson    &    Johnson    v.    Bauer    & 

Black    (27  C.  C.  A.  374),  249, 

281,    282,    394. 
V.    Bauer    &    Black      (79     Fed. 

Rep.    954),   249,    282. 

Johnson  v.  Brunor  (107  Fed.  Rep. 
466),    249. 

Johnson  v.  Hitchcock  (3  N.  Y. 
Supp.    680),    278. 

Johnson    v.    Moss     (45    Cal.    515), 

200. 
v.  Orr-Ewing  (7  App.  Cas.  219), 

15,    39,    293. 
V.  Seaman  (48  C.  C.  A.  158),  83. 
V.     Schenck      (Fed.    Case.    No. 

7412),  7. 

.Johnson  Steel  Street  Railway  Co. 
v.  North  Branch  Steel  Co. 
(48   Fed.   Rep.    191),    229. 

Joseph     Banigan     Rubber     Co.     v. 

Bloomingdale     (89     Off.     Gaz. 

1670),    96,   458. 
Joseph     Dixon     Crucible     Co.     v. 

Benham     (4    Fed.    Rep.    527). 

391. 

Joseph  v.  Macowsky  (96  Cal. 
518),  09. 

Josselyn  v.  Swezey  &  Dart  (15 
Off.    Gaz.    702),   42L 


xl 


TABLE   OF  CASES. 


Jud-Koh 


-^ 


1.1 


References 

J.    &    P.    Coats    V.    John    Coates 

Thread    Co.     (135    Fed.    Rep. 

177),    155. 
J.  R.  Watkins  Med.   Co.  v.  Sands 

(83  Minn.  326),  58,  219. 
Judson   V.    Malloy    (40   Cal.   299), 

183. 
Julian    V.    Hoosier    Drill    Co.    (78 

Ind.    408),    63,    100,    179,    180. 
Jurgenson  v.  Alexander  (24  How. 

Pr.    269),   402,   793. 

K 

Kaiserbrauerei    v.    Baltz    Brewing 

Co.    (71    Fed.    Rep.    695),    92, 

101. 
Kann   v.    Diamond    Steel   Co.    (89 

Fed.  Rep.   706),  256,  281,  282, 

289,    294. 
Kassel  v.  Jeuda    (70  N.  Y.  Supp. 

480),   249. 
Kathreiner's   Malz  Kaffee  Fab.   v. 

Pastor    Kneipp    Med.    Co.    (82 

Fed.   Rep.    821),    21. 
Keasbey  v.  Brooklyn  Chemical  Co. 

(142  N.  Y.  467),  97,  111,  161. 
Keller  v.  B.  F.  Goodrich  Co.   (117 

Ind.  556),  378. 
Kellog    V.    Totten     (16    Abb.     Pr. 

35),    194. 
Kelly  V.  Byles   (40  L.  T.  623),  93. 
Kennedy    v.    Dr.    David    Kennedy 

Corp.    (66    N.    Y.    Supp.    225), 

310. 
Kennedy    Corp.    v.    Kennedy     (55 

N.   Y.   Supp.   917),   309 
Kenny  v.  Gillet  (70  Md.  574),  70. 
Kentucky     Distilleries     &     Ware- 
house    Co.     V.    Wathen     (110 

Fed.   Rep.    641),    286. 
Kerry   v.    Toupin    (60    Fed.    Rep. 

272),    104,   249,    253. 


are  to  pages. 

Keuffel    &    Esser    Co.    v.    H.    S. 

Crocker    Co.     (118    Fed.    Rep. 

187),    283,    284,    285,   287,    288, 

289. 
Kidd     V.     Horry     (28     Fed.     Rep. 

773),    238. 
V.  Johnson    (100  U.  S.  617),  21, 

30,   34,  61,  102,   148,   179,  189, 

334. 
Kidd    &   Co.    V.    Mills,   Johnson    & 

Co.     (5    Off.    Gaz.    337),    102, 

334. 
Kinahan    v.    Bolton     (15    Ir.    Ch. 

75),    297,    299,    332. 
V.  Kinahan    (15  Ir.  Ch.  75),  256. 
Kingsley     v.    Jacoby     (20     N.    Y, 

Supp.    44),    312. 
Kinney   v.   Allen    (Fed.    Case   No. 

7826),    296,   418. 
V.    Basch     (Seb.    542),    35,    104, 

296,    299. 
Kinney    Tob.    Co.    v.    Mailer    (53 

Hun,   340),  104. 
Kipling   V.    G.    P.    Putnam's    Sons 

(57   C.   C.   A.    295),   7,   164. 
Kirkpatrick  v.  Pope  Mfg.  Co.    (61 

Fed.   Rep.    46),    396. 
Klotz    V.     Hecht     (73     Fed.     Rep. 

822),    45,    136. 
Knoedler     v.     Boussod     (47     Fed. 

Rep.   465),   187,   189,   197,   206, 
V.    Glaenzer    (5    C.    C.    A.    305), 

187,   189,   197,   198,   206. 
Knott   V.    Morgan    (2    Keen,    213), 

43. 
Knox    V.    Columbia    Liberty    Iron 

Co.    (42   Fed.   Rep.    378),    391. 
Koebel      v.      Chicago       Landlords' 

Protective     Bureau     (210    111. 

176),    286. 
Kohler  v.  Sanders  (122  N.  Y.  65), 

91. 
Kohler  Mfg.  Co.  v.  Beeshore   (1), 

(53   Fed.   Rep.   262),    451. 
V.    Beeshore    (2),    (8    C.    C.    A. 

215).   21,    184,    220,    291,    322, 

451. 


Kos-Law 


TABLE   OF  CASES. 


xU 


References 

Kostering    v.    Seattle    Brewing    & 

Malting  Co.   (54  C.  C.  A.  76), 

103,    268,    302. 
Kramer   v.   Old    (119   N.   Car.   1), 

209. 
Krauss    v.    Jos.    R.    Peebles'    Sons 

Co.    (58    Fed.    Rep.    585),    68, 

275,   276,  353,   373. 
Kroegher  v.  McConway  &  Forley 

Co.    (149  Pa.  St.  444),  230. 
Kronthal   Waters   v.    Becker    (137 

Fed.   Rep.    649),    25. 
Kroppf    V.    Furst    (94    Fed.    Rep. 

150),   44,   45. 
Kyle    V.    Perfection    Mattress    Co. 

(127    Ala.    39),    103. 


Labouchere  v.   Dawson    (L.  R.  13 

Eq.   322),   206. 
Lacroix  v.   Escobal    (37   La.  Ann. 

533),   413,   453. 
La   Croix   v.   May    (15    Fed.   Rep. 

236),    60,    62,    461. 
V.  Sarrazin   (15  Fed.  Rep.  489), 

391. 
Lafayette  Ins.  Co.  v.   French    (18 

How.    404),    350. 
Laird    v.    Wilder    (2    Bush,    Ky., 

131),  70. 
Lalance   &   Grosjean   Mfg.    Co.    v. 

National  Enameling  &  Stamp- 
ing Co.    (109   Fed.   Rep.   317), 

249. 
Lamb    v.    Evans    (L.    R.    1892,    3 

Ch.    462),   224. 
Laraont   v.    Leedy    (88   Fed.   Rep. 

72),   89,   366. 
Lamplough     v.     Balmer     (W.    N., 

1867,   p.    293),    73. 
Lanahan    v.    John    Kissel    &    Son 

(135     Fed.     Rep.     899),     100, 

377. 


are  to  pages. 

Landreth    v.    Landreth     (22    Fed. 

Rep.    41),   143,   145,   249. 
Lane    v.    Smythe     (46    N.    J.    Eq. 

443),   188. 
Lare  v.  Harper  &  Bros.   (30  C.  C. 

A.    373),    380,    400. 
La  Republique  Francaise  v.  Sara- 
toga   Vichy    Springs    Co.     (99 
Fed.   Rep.   773),   397. 
V.    Saratoga   Vichy   Springs   Co. 

(191    U.    S.   427),    159. 
V.    Schultz    (1),    (57    Fed.    Rep. 

37),   6,   129. 
V.    Schultz    (2),    (94    Fed.    Rep. 

500),    45,    46. 
V.    Schultz     (3),     (42    C.    C.    A. 

233),    172. 
V.   Schultz    (4),    (115  Fed.  Rep. 
196),    292. 
Larrabee   v.   Lewis    (67   Ga.   561), 

4,  94. 

Lashus    V.    Chamberlain    (6   Utah 

385),    189,   214. 
Lauferty  v.  Wheeler   (11  Abb.  N. 

C.    220),    77,   96,   135. 

Laughman's  Appeal  (128  Pa.  1), 
25. 

Lautz    Bros.    &   Co.    v.    Schultz   & 

Co.    (9  Off.  Gaz.  791),  421. 
Lavanburg  v.    Pfeiffer    (52   N.   Y. 

Supp.    801),   277. 
V.  Pfeiffer   (66  N.  Y.  Supp.  39), 

277. 
Laverne  v.   Hooper    (Ind.  L.   R.   8 

Mad.  149),  176,  337,  353. 
Lawrence   v.    Times    Printing   Co. 

(90   Fed.   Rep.    24),   217. 

Lawrence  Mfg.  Co.  v.  Lowell  (129 
Mass.   325),   296,  298. 

V.  Tenn.  Mfg.  Co.  (31  Fed. 
Rep.    776),   354. 

V.   Tennessee   Mfg.   Co.    (138   U. 

5.  537),  16.  38,  41,  44;  84, 
108,  120,  126,  159,  141.  181, 
257,   354. 


xlii 


TABLE   OF  CASES. 


Law-Lig 


Lawson   v.    Bank    of   London    (18 

C,   B.    84),    b51. 
Lazenby   v.   White    (41   L.   J.   Cli. 

354),   91,    179,    180. 
Lea    V.    Deakin     (Fed.    Case    No. 

S154),    95,    129,    180. 
V.    Millar    (Seb.    513),    95,    180, 

181. 
V.  Wolff   (15  Abb.  Pr.  N.  S.  1), 

95,    128,    137,    373. 
Leahy  V.  Glover   (10  R.  P.  C.  141), 

374,   393. 
Leather  Cloth  Case    (11  H.  L.  C. 

523),     3,     9,     13,     21,     22,     28, 

39,    69,    74,    75,    138,    149,    179, 

265,  361.  395. 
Leather   Cloth    Co.    v.    Hirschfield 

(1),    (1   N.   R.   551),  76. 
V.  Hirschfield    (2),    (1  H.  &  M. 

295). 
V.    Lorsont    (L.    R.    9   Eq.    345), 

72. 
Leclancha    Battery    Co.    v.    West- 
ern    Electric     Co.      (1),      (21 

Fed.   Rep.   538),   379,   380,   401. 
V.     Western    Electric    Co.     (2), 

(23   Fed.   Rep.    276),   111. 
Lee  V.  Haley  (22  L.  T.  N.  S.  251), 

35,    172. 
V.  Haley   (5  Ch.  App.  Cas.  155), 

168,    272,   373. 
Lehigh   Valley   Coal    Co.   v.   Ham- 
blen   (23  Fed.  Rep.  225),  154. 
Leidersdorf    v.   Flint     (1),     (Fed. 

Case  No.  8,219),  314,  411. 
V.    Flint     (2),     (50    Wis.    401), 

359. 
Lemoine    v.     Gauton      (2     E.     D. 

Smith,    343),    62,    179,    360. 
Leonard   v.    Wells    (L.    R.    26    Ch. 

D.    288),    105. 
V.    White's    Golden     Lubricator 

Co.    (38    Fed.   Rep.    922),   105, 

373. 
Le  Page  Co.  v.  Russia  Cement  Co. 
(2  C.  C.  A.  555),  24,  352,  358, 

359. 


References  are  to  pages. 

Leprince    v.    Her    &    Morris     (92 


Off.    Gaz.    189),    453. 
Lever  v.  Bedingfield    (80  L.  T.  N. 

S.  100),  44,  124. 
Lever    v.    Goodwin     (4    R.    P.    C. 

492),  124. 
Lever  Bros.    (Ltd.)   v.  Pasfield  (88 

Fed.  Rep.  484),  104,  289,  393. 

Lever    Bros.    Ltd.,    Boston    Works 

v.  Smith   (112  Fed.  Rep.  998), 

289. 
Levyean   v.    Clements    (175    Mass. 

376),    225. 
Levy  V.  Waitt   (1),   (56  Fed.  Rep, 

1016),    21,    56,    97. 
V.  Waitt  (2),   (10  C.  C.  A.  227), 

14,   21,   56,   58,  63,  65. 
V.    Walker     (L.    R.    10    Ch.    D. 

463),   23. 
Lewis  &  Nelson's  Appeal    (67  Pa. 

153),    376. 
Lewis    V.     Chapman     (3    Beavan, 

133),  120. 
V.    Klapproth     (11    Vict.    L.    R. 

(E)     214),    354. 
V.    Langdon    (7    Sim.    421),    24, 

211. 
L.  H.  Harris   Drug  Co.  v.   Stucky 

(46    Fed.    Rep.    624),    16,    89, 

323,   446,   450,   455. 
Lichtenstein      v.      Goldsmith     (37 

Fed.   Rep.   359),   99,   182. 
Liebig's    Extract    Co.    v.    Hanbury 

(17   L.   T.   N.   S.   298),   92,180. 
Liebig's    Extract    of    Meat    Co.    v. 

Libby,   McNeill  &  Libby   (103 

Fed.    Rep.    87),    92. 
Liebig's    Extract    of    Meat    Co.    v. 

Walker     (115    Fed.    822),    92, 

321. 
Liggett    &    Myer    Tobacco    Co.    v. 

Finzer    (128    U.    S.   182),   272, 

291. 
V.    Hynes    (20    Fed.    Rep.    883), 

104.    243,    256,    263,    280,    303, 

391,    419. 


Lig-Man 


TABLE   OF  CASES. 


xliii 


References  are   to  pages. 


Liggett    &    Myer    Tobacco    Co.    v. 

Sam   Reid   Tob.   Co.    (104    Mo. 

53),  272,  361. 
Lilienthal    v.    Drucklieb    (84    Fed 

Rep.  918),  217. 
Linde    v.    Bensel    (22    Hun,    601), 

333. 
Linoleum    Mfg.    Co.    v.    Nairn     (7 

CIi.     Div.     834),    79,    92,     109, 

140. 
Linton  v.  First  National  Bank  of 

Kittanning     (10      Fed.      Rep. 

894),  139. 
Lippincott   v.    Hubbard    (28    Pitts. 

L.   J.    303),    23,    25. 
Lippman  v.  People   (175  HI.  101), 

557. 
Listman    Mill    Co.    v.    Wm.    List- 
man   Mill   Co.    (88   Wis.   334), 

23,  102. 
Little  V.   Gallus    (38   N.    Y.    Supp. 

487),  220,   222,   227. 
V.   Kellam   (100  Fed.  Rep.  353), 

288. 
Littlejobn    v.    Mulligan     (3     New 

Zealand    Rep.    446),   384. 
Livermore  v.  White   (74  Me.  452), 

183. 
Llewellyn    v.    Rutherford     (L.    R. 

10  C.  P.   456),   195. 
Lockwood    V.    Bostwick    (2    Daly, 

521),   97,   283. 
Longman   v.   Tripp    (2    Bos.   &   P. 

N.  R.  67),  25. 
V.    Winchester     (16    Ves.    269), 

165. 
Lord    V.    Whitehead    &    Atherton 

Machine    Co.     (24    Fed.    Rep. 

801).   364,   395. 
Lord   Byron  v.   Johnston    (2   Mer. 

29),    43. 
Lorillard    Co.    v.    Paper    (86    Fed. 

Rep.  956),  294. 
Lorillard   v.   Pride    (28    Fed.   Rep. 
434),  79,   243,   244,   419.  452. 
V.    Wight    (15    Fed.    Rep.    383). 
249. 


Love   V.   Stidham    (18   App.    D.   C. 

306),   209. 
Low   V.   Fels    (35   Fed.   Rep.   361), 

382. 
V.    Hall    (47    N.    Y.    104),    656. 
V.    Hart     (90    N.    Y.    457),    338, 

374. 
Lowell    Mfg.   Co.   V.   Lamed    (Fed. 

Case  No.  8570),  57.  59,  419. 
Lucker   v.    Phoenix   Assurance  Co. 

(67    Fed.   Rep.    18),   396. 
Luddington   Novelty  Co.   v.   Leon- 
ard   (119   Fed.   Rep.   937),   97. 
V.    Leonard    (62   C.    C.    A.    269), 

384. 
Lux  V.  Haggin   (68  Cal.  255),  174, 
Luyties    v.     Hollender     (1),     (21 

Fed.  Rep.   281),  315,  321,  328, 

365,    461. 
V.  Hollender   (2),   (30  Fed.  Rep. 

632),  92,   329,  461. 
Lyman    v.    Burns     (47    Off.    Gaz. 

660),  103. 
Lysney    v.    Selby    (2    Ld.    Raym. 

1118),    216. 

M 

Macdonald  v.  Richardson    (1  Giff. 

81),    188. 
Macmahan      Pharmacal      Co.      v. 

Denver    Chem.    Mfg.    Co.    (51 

C.  C.  A.  302),  21,  65. 
Magee  Furnace  Co.  v.   Le  Barron 

(127    Mass.   115),    275. 
Magnolia    Metal    Co.    Trademarks 

(66   L.   J.   Ch.   N.   S.   312),  92. 

Mandeville  v.   Harmon    (42   N.   J. 

Eq.    185),    192. 
Manhattan  Med.  Co.  v.  Wood   (1), 

Fed.    Cas.    No.    9026).    17.  51, 

303. 
V.   Wood    (2).    (108    U.    S.   218), 

24,    67,    68,    71,    105,    106,    135, 

181,    243. 


xliv 


TABLE   OF  CASES. 


Man-Mel 


References 

Manitowoc    Malting    Co.    v.    Mil- 
waukee  Malting   Co.  (119  Wis. 

543),    272. 
Manitowoc  Mfg.  Co.  v.  Dickerman 

(57    Off.    Gaz.    1721),    63,    324, 

458,    460. 
Manitowoc     Pea-Packing     Co.     v. 

William    Numsen   &   Sons  (93 

Fed.   Rep.   196),  137. 
Manufacturing    Co.     v.     Simpson 

(54    Conn.    527),    145. 
V.  Trainer    (101  U.   S.  51),  3,  4, 

6,  68,  87,  126,  263,  297,  298,  299. 
Marcovitch    v.    Bramble,    Wilkins 

&     Co.     (Cox.      Manual,     No. 

595),    398. 
Marcus  Ward  &  Co.  v.  Ward   (1), 

(15   N.   Y.    Supp.    913),   143. 
V.  Ward    (2),    (40  N.  Y.  S.  Rep. 

792),  206. 
Market  Co.  v.  Hoffman  (101  U.  S. 

112),  329. 
Marks    v.    Jaffa    (26    N.    Y.    Supp. 

908),   235. 
Marsh  v.   Billings    (7   Cush.   322), 

271,   358,   312. 
V.    Warren     (14    BlatcM.    263), 

425,    427. 
Marshall    v.    Hawkins     (4    N.    Z. 

L.   R.   Sup.   Ct.   59),   261. 
V.   Pinkham    (52  Wis.   572),   92, 

180,  354. 
V.  Ross    (L.   R.   8   Eq.  651),  77, 

288. 
Martha      Washington       Creamery- 
Buttered    Flour    Co.    V.    Mar- 
tian   (44    Fed.    Rep.    473),   54, 

378. 
Martin     v.     Bowker     (163     Mass. 

461),   591. 
V.   Murphy    (129   Ind.  464),  191, 

213,   214. 
V.  Wright   (6  Sim.  297),  46. 
Marvel  Co.  v.  Pearl    (—  C.  C.  A. 

— .,   133   Fed.    Rep.   160),   95. 


are   to  pages. 

Marvel    Co.     v.     Tullar    Co.    (125 

Fed.  Rep.  829),  255. 
Massam    v.    Cattle    Food    Co.    (L. 

R.   14  Ch.   D.   748),   22. 
Matthews  v.   Murchison    (17   Fed. 

Rep.    760),    174. 
Matsell     V.     Flannagan     (2     Abb. 

Pr.   N.    S.    459),   166,   168. 
Matter    of   Hondayer    (150    N.    Y. 

37),    192. 
Mayer  v.  Flanagan    (12  Tex.  Civ. 

App.    405),    24. 
Maxwell    v.    Hogg    (L.    R.    2    Ch. 

App.   307),   64,  368. 
McAndrew  v.   Bassett   (4  DeG.  J. 

&    S.     380),    21,    58,    96,    402, 

404. 
McCall    V.    Theal    (28    Grant    Up. 

Can.    Ch.   48),   88. 
McCann  v.  Anthony   (21  Mo.  App. 

83),  249,   267,   294,   333,  375. 
McCardel    v.    Peck    (28    How.    Pr. 

120),   175,   311. 
McCord    V.    Williams    (96    Pa.    St 

78),  209. 
McElwee    v.     Blackwell     (15     Off. 

Gaz.   658),  412,  416,  423. 
McGowan    v.    McGowan    (22    Ohio 

St.   370),  197,   210,  211. 
McLean    v.    Fleming     (96    U.    S. 

245),    3,    24,    26,    38,    44,    106, 

143,    144,    151,    172,    256,    257, 

264,    265,    361,    364,    372,    377, 

382,   402,   407,  760. 

McMurtrie  v.  Guiler  (183  Mass. 
451),  205. 

McVeagh  v.  Valencia  Cigar  Fac- 
tory   (32    Off.    Gaz.   1124),    22. 

McVey    v.    Brendel    (144    Pa.    St. 

235).   56. 

Melachrino  v.  Melachrino  Cigar- 
ette Co.  (4  R.  P.  C.  215),  141, 
146,    181,    375. 

Mellersh  v.  Keen  (28  Beavan, 
453),   205,   214. 


Mel-Moo 


TABLE   OF  CASES. 


xlv 


References 

Mellin   v.   White    (L.   R.,   1895,  A. 

C.  154),  49. 
Meneely    v.    Meneely     (62    N.    Y. 

427),    140,    143. 
Menendez  v.  Holt  (128  U.  S.  514), 

21,    23,    31,    56,    100,    101,    106, 

116,    176,    177,    186,    188,    212, 

257,    373. 
Merchants'   Ad.   Sign  Co.   v.   Ster- 
ling   (124   Cal.   429),   202. 
Meriden  Britannia  Co.   v.   Parker 

(39  Conn.   454),  70,  375. 
Merriam    v.    Famous     Shoe     and 

Clothing    Co.     (47    Fed.    Rep. 

411),   88,   164. 
V.    Holloway   Pub.   Co.    (43   Fed. 

Rep.    450),    164. 
V.  Texas   Sif tings  Pub.   Co.    (49 

Fed.  Rep.   944),  95,   164. 
Merry  v.  Hoopes   (111  N.  Y.  415), 

23. 
Merry  weather    v.     Moore     (L.    R. 

1892,   2   Ch.    D.   518),   222,224. 
Messer     v.     The      Fadettes      (168 

Mass.    140),    147. 
Messerole    v.    Tynberg    (36    How. 

Pr.  14),  13,  97,   139. 
Metropolitan    Bank    v.    St.    Louis 

Dispatch    Co.     (1),     (36    Fed. 

Rep.   722-724),  187,  188,  192. 
V.   St.   Louis   Dispatch   Co.    (2), 

(149     U.     S.     436),     186,     188, 

192. 
Metzler  v.  Wood   (L.  R.  8  Ch.  D. 

606),  376. 
Meyer   v.    Bull    Medicine    Co.    (58 

Fed.  Rep.  884),  124,  144. 
V.    Labau    (51    La.    Ann.    1726), 

209. 
Millbrae  Co.  v.  Taylor    (25  L.  R. 

A.    193),   70. 
Miller  v.  Beck  (Iowa),  (72  N.  W. 

Rep.    553),    215. 
V.    Keeler     (9    Pa.    Co.    Ct.    R. 

274),    192. 


are   to  pages. 

Miller    Tobacco    Manufactory    Co. 

V.    Commerce    (45   N.    J.    Law 

18),    258. 
Millington   v.   Fox    (3   My.   &   Or. 

338),    255.   271,    297,    403,    405. 
Milwaukee  R.  R.  Co.  v.  Arms  (91 

U.   S.   487),   358. 
Miskell  V.  Prokop  (58  Nebr.  628), 

279. 
Mississippi    &    Mo.    R.    R.    Co.    v. 

Ward    (2   Black,   485),   329. 
Missouri        Pacific       Railway      v. 

Humes    (115   U.   S.   512),   358. 
Mitchell  V.   Henry    (L.   R.   15   Ch. 

D.    181),    392. 
V.  Read    (84   N.   Y.   556),   214. 
M.  J.  Breitenbach  Co.  v.  Spangen- 

berg     (131     Fed.     Rep.     160), 

103,    116,   287. 
Moet  V.  Clybonn    (Seb.   533),   297. 
V.  Cousten    (33  Beav.  578),  271, 

404. 
V.    Pickering    (L.    R.    8    Ch.    D. 

372),    297,    299,    339,    405. 
Monarch    v.    Rosenfeld     (19    Ky. 

Law  Rep.  14),  154. 
Monopol  Tobacco  Works  v.   Gen- 

sior  (66  N.  Y.  Supp.  155),  392. 
Monroe  Cattle  Co.  v.  Becker   (147 

U.    S.    47),   450. 
Monson  v.   Boehm    (L.   R.   26   Ch. 

D.   398),   63,   176,   177. 
Montgomerie  v.  Donald   (Ct.  Sess. 

Cas.    4th    Ser.    11,    506),   95. 
Montgomery   v.    Thompson    (1891, 

App.    Cas.    217),    140. 
Moody  V.  Thomas  (1  Disney  294), 

198. 
Moore  v.  Rawson    (185  Mass.  264), 

30,    205. 
V.   Rugg    (44   Minn.    28),   225. 
V,  Stevenson   (27  Conn.  14),  183. 

Moorehead     v.     Hyde     (38     Iowa 
382),    215. 


xlvi 


TABLE   OF  CASES. 


Moo-New 


References  are   to  pages. 

Moorman  v.  Hoge   (Fed,  Case  No. 
9783),    16,    243.    354,   413,    418, 
450. 
Moreau  v.  Edwards   (2  Tenn.  Ch. 

347),    198. 
Morgan  v.  McAdam   (36  L.  J.  Ch. 
228),    69,    73. 
V.    Rogers    (19    Fed.    Rep.    596), 

22,    23,    25,    193. 
V.    Schuyler     (79    N.    Y.    490), 
206,   211. 
Morgan    Envelope    Co.    v.    Walton 
(1),    (82  Fed.  Rep.  469),  281, 
289. 
V.    Walton    (2),    (86    Fed.   Rep. 
605),    124,    128. 
Morgan  Sons  Co.  v.  Troxell   (Cox, 

Manual,  674),  243,  252,  276. 
Morison    v.    Moat    (21    L.    J.    Ch. 

248),   222,    225. 
Morris  v.  Moss  (25  L.  J.  Ch.  194), 

188. 
Morrison  v.   Case    (Fed.   Case  No. 
9845),    104,    419,    454. 
V.    Salmon    (2    Man.   &  G.   385), 
255. 
Morse    v.     Hutchins     (102     Mass. 
439),  216. 
V.  Worrell    (10  Phila.  168),  103, 
376. 
Morse  Machine  Co.  v.  Morse   (103 

Mass.   73),   219. 
Mossier    v.    Jacobs    (65    111.    App. 

571),  104,    288. 
Motley  V.  Downman   (3  My.  &  Cr, 

1),  255,  297,  335. 
Moxie  Nerve   Food  Co.   v.  Baum- 
bach    (32   Fed.    Rep.    205),   53, 
122,   253,   287,   377. 
V.    Beach    (33    Fed.    Rep.    248), 

259,   287,   380,   396. 
V.    Beach    (35    Fed.    Rep.    465), 
221. 
Mullins   V.    People    (23    How.    Pr. 
289),    654. 


Mumm    V.    Kirk     (40    Fed.    Rep 

589),   45,   112. 
Munro  v.  Smith    (13  N.  Y.   Supp. 
708),    262,    277. 
V.   Tousey    (129   N.  Y.   38),   267. 
Munsey  v.   Butterfield    (133   Mass. 

492),   188.   206. 
Murray  v.   Engraving  Co.    (28   N. 

Y.    Supp.    271),    237. 
Musselman    &    Clarkson's    Appeal 

(62    Pa.    St.    81),    189. 
Myers  v.  Baker   (3  H.  &  N.  802), 
255. 
V.    Cunningham    (44    Fed.    Rep. 

349). 
V.    Kalamazoo    Buggy    Co.      (54 

Mich.   215),   148,   207. 
V.   Theller    (38    Fed.    Rep.   607), 
249,    274. 


N 


National     Biscuit    Co.    v.     Baker 

(95     Fed.    Rep.     135),    7,    10, 

104.   289.  301,  302,  304. 
V.    Ohio    Baking    Co.    (127    Fed. 

Rep.    160).    101. 
V.  Swick    (121  Fed.  Rep.  1007), 

249. 
National    Gum    &    Mica     Co.     v. 

Braendly     (51     N.     Y.     Supp. 

93),    228. 
National  Starch  Mfg.   Co.  v.  Dur- 

yea    (41   C.    C.  A.    244),   143. 
Native     Guano     Co.     v.     Sewage 

Manure    Co.     (8    P.    R.    125). 

93. 
Neilson  v.   Betts    (L.   R  .5   H.   L. 

R.    1),   359. 
Nerve  Food  Co.  v.  Baumbach   (32 

Fed.  Rep.  205),  53. 
Neva  Stearine  Co.  v.  Mowling   (9 

Vict.    L.    R.    98),    180. 
Newark  Coal  Co.  v.  Spangler   (54 

N.    J.    Eq.    354),    143. 


New-Ome 


TABLE  OF  CASES. 


xJvii 


References 

Newbro    v.    Undeland    (96    N.    W. 

Rep.    635),    377. 
Newby    v.    Railroad     Co.      (Fed. 

Case   No.   10,144),  150. 
New    Home    Sewing    Machine    Co. 

V.     Bloomingdale      (59      Fed. 

Rep.    284),    100.    285. 
Newman    v.    Alvord      (49     Barb. 

588).   6,   18,   35,   85,   87,    136. 
V,    Pinto    (4   •\   P.   C.    508),    70, 

375,    404. 
New    Orleans    v.     Steamship    Co. 

(20    Wall.    387).    398. 
New    York    Asbestos   Mfg.    Co.    v. 

Ambler       Asbestos        Air-Cell 

Covering    Co.     (1),    (99    Fed. 

Rep.  85),  379.  380,  400. 
V.     Ambler     Asbestos     Air-Cell 

Covering    Co.     (43    C.    C.    A. 

46),    379. 
New  York  Cement  Co.  v.  Coplay 

Cement     Co.      (1),     (44     Fed. 

Rep.  277),  94. 
V.   Coplay  Cement  Co.    (2),    (45 

Fed.    Rep.    212),    27,    52,    94, 

134,   336. 
New   York   Life    Ins   Co.   v.    Crav- 
ens   (178    U.    S.    389),    318. 
Nichols   V.   Kimpton    (3   Times  L. 

R.    674),    402. 
Nicholson     v.     Wm.     A.     Stickney 

Cigar  Co.    (158  Mo.  158),  264. 
Nlxey    V.    Roffey     (W.    N.,     1870, 

p.    227),    72. 
N.    K.    Fairbank    Co.    v.    Central 

Lard  Co.   (64  Fed.  Rep.  133), 

98,    182,    284.    373. 
V.    Dunn    (126    Fed.    Rep.    227), 

277. 
V.    Luckel,   King   &    Cake    Soap 

Co.    (1).    (88   Fed.  Rep.   694). 

45,   100,    267,    285,   301. 
V.    Luckel,   King   &   Cake    Soap 

Co.    (2),    (42    C.    C.    A.    376), 

8,    267,   285,    301. 
V.    Luckel,   King   &    Cake    Soap 


are  to  pages. 

Co.   (3),   (106  Fed.  Rep.  498), 

372. 
v.    Luckel,   King   &   Cake    Soap 

Co.    (4),    (54    C.    C.    A.    204), 

172. 
V.  R.  W.  Bell  Mfg.  Co.  (71  Fed. 

Rep.    295),    248. 
V.   R.   W.   Bell   Mfg.   Co.    (23   C. 

C.   A.    554),    248,   268,   793. 
V.   Windsor    (61   C.   C.  A.    233), 

382. 
Noel  V.  Ellis    (89  Fed.  Rep.  978), 

95,    289. 
Noera  v,   Williams  Mfg.   Co.    (158 

Mass.    110),   253. 
Nolan   Bros.    Shoe    Co.    v.    Nolan 

(131    Cal.    271),    279. 
Northcutt    v.     Turney     (101     Ky. 

314),    55,    97,    129,   134,    335. 
North   Eastern   Awl   Co.   v.    Marl- 
borough  Awl    Co.    (168    Mass. 

147),  7. 
Nunn  V.  D' Albuquerque  (34  Beav. 

595),    403. 
Nuthall  V.  Vining  (28  W.  R.  330), 

243.  249. 


0 

Oakes    v.    St.    Louis    Candy    Co. 

(146    Mo.    391).    7,    59. 
V.    Tonsmierre     (49    Fed.    Rep. 

447),    22,    62,   38L 
Oakey  v.  Dalton   (L.  R.  35  Ch.  D. 

700),    335. 
Ohio    &  Miss.    Ry.   Co.    v.    Press 

Pub.   Co.    (48  Fed.   Rep.   206), 

48. 
Ohio  Baking  Co.  v.  National  Bis- 
cuit   Co.    (62    C.    C.    A.    116). 

101. 
Oldham     v.     James     (13     Ir.     Ch. 

393),   354. 
Olin  V.   Bate    (98   111.   53).  140. 
Omega   Oil    Co.   v.   Weschler    (71 

N.    Y.    Supp.    983),    103,   270. 


xlviii 


TABLE   OF  CASES. 


Ono-Peo 


Onondaga    Co.     Milk    Association 

V.    Wall    (17    Hun,   494),    200. 
Opinion  of  Attorney  General    (47 

Off.    Gaz.   397),   804. 
Oppermann     v.     Waterman      (94 

Wis.    583),    285. 
Oregon  Steam   Nav.  Co.  v.  Wind- 
sor   (20   Wall.    64),    202. 
O'Rourke    v.    Central    City    Soap 

Co.    (26    Fed.    Rep.    576),    64, 

96,    366. 
Orr    V.    Diaper    (L.    R.    4    Ch.    D. 

92),    339,    395. 
Orr-Ewing  v.   Chooneeloll  Mullick 

(Cor.   150),    62. 
V.  Grant,  Smith  &  Co.   (2  Hyde, 

185),  62,  256. 
V.   Johnson    (7  A.   C.   219),   262, 

281,     304. 
Orr-Ewing    &    Co.    v.    Grant      (2 

Hyde,  185),  256. 
Osgood  V.  Allen   (1  Holmes,  185), 

85,    127,    128,    262. 
V.    Rockwood    (Fed.     Case     No. 

10,605),    100,    371,    416,    422. 


Pabst     Brewing     Co.      v.      Ekers 

(Rap.     Jud.     Que.     21     C.     S. 

545),   62. 
Palmer   v.    Graham    (1   Pars.   Eq. 

Cas.    476),   198. 
V.  Harris    (60   Pa.   St.  156),   69, 

70,    100,    374. 
V.  Travers    (20  Fed.  Rep.   501), 

49. 
Paris  Medicine  Co.  v.  W.  H.   Hill 

Co.     (42    C.    C.    A.    227),    263, 

302. 
Parker  v.   Hulme    (1  Fisher,  44), 

356. 
Parkland    Hill    Blue    Lick    Water 

Co.  V.  Hawkins   (95  Ky.  502), 

97. 


References  are  to  pages. 

Parkhurst  v.  Brock   (47  Atl.  Rep. 

1068),    208. 
Parlett  v.  Guggenheimer    (67   Md. 

542),    70,    285,    374. 
Parsons  v.   Hay  ward    (31  Beavan, 

199),   188,   195. 
Partlo    V.    Todd     (17    Can.    S.    C. 

R.    196),    114,    116. 
Partridge  v.  Menck   (2  Sandf.  Ch. 

R.    622),    69,    127,   373. 
Paton    V.    Majors    (46    Fed.    Rep. 

210),    396. 
Paul    V.    Barrows    (4    DeG.    J.    & 

S.     150),     299. 
V.   Virginia    (8   Wall.  168),  318, 

350. 
Pavesich    v.    New    England    Life 

Ins.    Co.    (50   S.  E.   Rep.   68), 

236,    240. 
P.    C.    Weist    Co.    V.    Weeks    (177 

Pa.    412),    50,    323. 
Peabody     v.     Norfolk     (98     Mass. 

452),    219,    220,    222,    224. 
Peltz    V.    Eichele     (62    Mo.    171), 

213. 
Pence  v.  Langdon    (99   U.   S.  578, 

581),    174. 
Pennsylvania  Co.  v.  Railroad  Co. 

(118  U.   S.  290),  350. 
Pennsylvania    Salt     Mfg.     Co.    v. 

Meyers     (79    Fed.    Rep.     87), 

103. 
Pennsylvania  Tel.  Co.  v.  Western 

Union  Co.    (96  U.   S.  9),   319. 
People    V.     Bartholf     (20     N.     Y. 

Supp.    782),    656. 
V.  Cannon    (139  N.  Y.  32),  654, 

656. 
V.    Elfenbein    (20    N.    Y.    Supp. 

364),   656. 
V.    Fisher    (57    N.    Y.    Sup.    Ct. 

552),    56,    419. 
V.    Gluckman    (70    N.    Y.    Supp. 

173),    655. 
V.    Hilfman     (70    N.    Y.    Supp. 

621),  655. 


Peo-Por 


TABLE   OF  CASES. 


xlix 


References 

People   V.    Hogan    (29    N.    Y.    St. 

110),  654. 
V.    Krivitzky    (168    N.    Y.    182), 

655. 
V.  Molins   (10  N.  Y.  Supp.  130), 

25,   460. 
V.  Roberts    (159  N.  Y.  70),  185, 

192,    193. 
Pepper    v.    Labrot    (8    Fed.    Rep. 

29),    23.    24,    179,    294. 
Perceval   v.   Phipps    (2   Ves.  &  B. 

19),   225. 
Perkins  v.  Heert   (158  N.  Y.  306), 

655. 
Perks   V.    Hall    (W.    N.,    1881,    p. 

Ill),  375. 
Perry    v.    Truefit     (6    Beav.    66), 

13,    38,    39,    69,    102. 
Peterson    v.    Humphrey     (4    Abb. 

Pr.    394),    24,    210. 
Petrolia   Mfg.    Co.   v.   Bell    &    Bo- 

gart  Soap   Co.    (97   Fed.  Rep. 

781),   31,    98. 
Pettes    V.    American    "Watchman's 

Clock    Co.     (85    N.    Y.    Supp. 

900),   655. 
Pfeiffer    v.    Wilde    (46    C.    C.    A. 

415),  389. 
Phalon  V.  Wright   (5  Phila.  464), 

69,   90.   375. 
Phelan    v.    Collender     (13    N.    Y. 

Sup.    Ct.    244),    24. 
Philadelphia   Nov.   Co.   v.   Blakes- 

ley    Nov.    Co.    (40    Fed.    Rep. 

588),    113,    249. 
V.    Rouss    (40    Fed.    Rep.    585), 

113. 
Philadelphia   R.    R.    Co.    v.    Quig- 
ley    (62  U.   S.    (21  How.)    213), 

357. 
Piaget  V.  Headley  (68  N.  Y.  Supp. 

351),    254. 
Pickett  V.  Green    (120   Ind.   584), 

191,  213. 
Pidding    v.    How    (8    Sim.    477), 

100,    69. 


arc   to  pages. 

Pierce    v.    Frank    (15    L.    J.    Ch. 

122).  402. 
V.    Fuller    (8   Mass.   228),    188. 
V.   Guittard    (68   Cal.   68),   41. 
Pike  Mfg.  Co.  v.  Cleveland  Stone 

Co.    (35   Fed.   Rep.   896),    100, 

101,    102.    105,    182,    283,    289. 
Pilmore   v.   Hood    (5    Bing.   N.    C. 

97).   216. 
Pillsbury    v.     Pillsbury- Washburn 

Flour    Mills    Co.,     (12    C.    C. 

A.   432),  25,  72,   263.  301,  303. 

375. 
Pillsbury-Washburn     Flour     Mills 

Co.    V.    Eagle    (82    Fed.    Rep, 

816),  130. 
V.   Eagle    (30   C.   C.   A.   386),   8, 

10,  130,  132,  135,  136,  141.  335. 
Pinto  V.  Badman   (8  R.  P.  C.  181, 

Cartmell,    270),    21,    115. 
V.    Trott    (8    P.    R.    173),    284. 
Piso  Co.  V.  Voight   (4  Ohio  N.  P. 

347),     70,     353. 
Pittsburg    Crushed    Steel    Co.    v. 

Diamond    Steel   Co.    (85   Fed. 

Rep.   637),  184,  290,   322,  323. 
Plant    Seed    Co.    v.    Michel    Plant 

&    Seed     Co.     (23     Mo.    App. 

579),   146. 
P.    Lorillard    Co.    v.    Peper     (86 

Fed.    Rep.    956),    294,    392. 
Pollen  V.   LeRoy    (30   N.   Y.   549), 

394. 
Pollard   V.    Photographic   Co.    (40 

C.     D.,     Eng.,     345),    225. 
Ponsardin  v.  Peto  (33  Beav.  643), 

339. 
Pontefact  v.  Isenberger  (106  Fed. 

Rep.   499),  100,  274. 
Pope  V.   Curl    (2  Atk.  342),   225. 
Popham    V.    Cole    (66    N.    Y.    69), 

267,   418. 
V.    Wilcox     (66    N.    Y.    69),    93, 

265,    291. 
Porter    v.    Gorman    (65    Ga.    11), 

188,  197. 


1 


TABLE   OF  CASES, 


Por-Ral 


References  ai 

Portuondo    v.     Monne     (28     Fed. 

Rep.    16),    261,    380. 
Postal    Tel.    Cable    Co.    v.    Netter 

(102    Fed.    Rep.    691),    460. 
Postum    Cereal    Co.    v.    American 
Health    Food    Co.     (109    Fed. 
Rep.    898),    8,    291. 
V.    American    Health    Food    Co. 
(56   C.   C.   A.   360),   247,    256. 
Potter  V.  Commissioners  of  Inland 

Revenue    (10    Ex.    147),   188. 
Potter  Drug  &  Chem.  Co.  v.  Mil- 
ler   (75    Fed.    Rep.    656),    99, 
282. 
Potter    Drug    &    Chem.    Corp    v. 
Pasfield    Soap    Co.    (102    Fed. 
Rep.    490),    99,    291. 
V.   Pasfield   Soap   Co.    (46   C.   C. 
A.   40),   99,   291. 
Ponsardin  v.  Peto,  (33  Beav.  642), 

339. 
Powell    V.    Birmingham    Vinegar 
Brewery     Co.     (L.     R.     1894, 
3   Ch.   D.   449),   124. 
Pratt's  Appeal    (117  Pa.  St.  401), 

29,   52,    335,    373. 
Pratt's    Mfg.    Co.    v.    Astral    Re- 
fining    Co.      (27     Fed.     Rep. 
492),    88. 
Press  Pub.   Co.  v.   Falk    (59   Fed. 
Rep.     324),     225. 
V.   Monroe    (73   Fed.   Rep.   196), 
357,    358. 
Preservaline    Mfg.    Co.    v.    Heller 
Chem.     Co.     (118    Fed.    Rep. 
103),    78. 
Price   V.    Goodall    (L..    R.    1891,    1 

Ch.    D.    35),    7. 
Price     Baking     Powder     Co.     v. 
Fyfe    (45   Fed.   Rep.  799),  99, 
122,  381. 
Prince's    Metallic    Paint     Co.     v. 
Carbon     Metallic     Paint     Co. 
(Seb.    573),    143. 
V.    Prince    Mfg.    Co.     (1),     (53 
Fed.  Rep.  493),  321,  328,  350. 
461. 


e   to  pages. 

Prince's    Metallic    Paint     Co.     v. 

Prince    Mfg.    Co.     (2),    (6    C. 

C.    A.    647),    175. 
Prince  Mfg.  Co.  v.  Prince's  Metal- 
lic  Paint   Co.    (1),    (15   N.   Y. 

Supp.    249),    23,    33. 
V.    Prince's    Metallic    Paint    Co. 

(2),    (135    N.    Y.    24),    66,    68, 

136. 
Probasco  v.  Bouyon    (1   Mo.  App. 

241),    22,    208. 
Proctor    V.     McBride     (Fed.    Cas. 

No.    11,441),    287. 
Procter    &    Gamble    Co,    v.    Globe 

Refining    Co.     (34    C.     C.    A. 

405),   249,    291,   294,   300. 
Provident     Chemical     Works     v. 

Canada  Chemical  Mfg.  Co.   (2 

Ont.    Law    Rep.    182),   88. 
Prudential       Assurance       Co.       v. 

Knott    (L,  R.  10  Ch.  D.  142), 

46. 
Putnam      Nail     Co,     v,      Ausable 

Horsenail    Co.    (53    Fed.    Rep, 

390),    45. 
V.   Bennett    (43   Fed.  Rep.   800), 

257,  372.  452. 
V,   Dulaney    (140    Pa.    205),  112, 

R 

Radam  v.  Destroyer  Co.  (81 
Texas,   122),   391,    392. 

Radde  v.  Norman  (L.  R.  14  Eq. 
348),    55,    286. 

Raggett  V.  Findlater  (L,  R.  17 
Eq.    29),   93. 

Rahtjen's  American  Composition 
Co.  V.  Holzappel's  Composi- 
tion Co.    (41  C.  C.  A.  329),  74. 

Railroad  Co,  v.  Harris  (12  Wall. 
65),    350. 

Rains  v.  White  (52  S.  W.  Rep. 
970),    249. 

Ralli  V.  Fleming  (Ind.  L.  P..  3 
Calc.   417),   296. 


Ral-Re  Con 


TABLE   OF  CASES. 


li 


References  are   to  pages. 


Ralph  V.  Taylor   (L.  R.  25  Ch.  D. 

194),    79. 
Rammelsberg      v.      Mitchell       (29 

Ohio    St.    22),   212. 
Ramsden    v.    Dyson    (L.    R.    1    H. 

L.    129),    174. 
Ranft   V.   Reimers    (200    111.   386), 

198. 
Ransom    v.    Ball    (7    N.    Y.    Supp. 
238),    68. 
V.    Mayor    (1    Fisher,   252),   356. 
Ransome  v.  Bentall    (3   L.  J.   Ch. 
161),    76,    266,    297,    298. 
V.   Graham    (51   L.   J.   Ch.   897), 
297. 
Rawlinson    v.    Brainard    &    Arm- 
strong   Co.    (59    N.    Y.    Supp. 
880),   100,   291. 
Rawson    v.     Pratt     (91     Ind.    9). 

214,  216. 
Raymond    v.    Royal    Baking    Pow- 
der   Co.     (1),     (22    C.    C.    A. 
278),  389. 
V.     Royal     Baking    Powder    Co. 
(2),    (29   C.   C.  A.   245),   103. 
Re  Adriance,  Piatt  &  Co.   (Comm. 
Decis.,    1881,    p.    52),    451. 
Alden    (15  Off.  Gaz.  389),  90. 
American    Lubricating    Oil     Co. 

(9   Off.   Gaz.   687),   104,   420. 
American    Sardine    Co.     (3    Off. 

Gaz.    495),    88,    418,    455. 
American     Saw     Co.     (58     Off. 

Gaz.    521).    455. 
Ames    (23   Off.  Gaz.   344),   455. 
Arbenz    (L.   R.   35   Ch.   D.   248). 

180. 
Armstrong     &     Co.     (26     MSS. 

D.    260),    452. 
Atkins     Filter     Co.     (3     P.     R. 

164),    94. 
Australian       "Wine       Importers, 
Ltd..    (L.   R.,   41   Ch.   D.   278), 
4. 
Baldwin    (30    L.    T.    354),    104. 


Re  Barker's  Trademark  (53  L.  T. 

N.  S.  23),  282. 
Barrows    (L.   R.   5   Ch.   D.   353), 

297,   299. 
Baschiera's  Trade-mark     (33  S. 

J.    469),    280. 
Blakeslee    &    Co.     (Comm.     De- 
cis.,  1871,   284),   419. 
Block  &  Co.    (14  Off.  Gaz.  235), 

415,    419. 
Boehm  &  Co.    (8  Off.  Gaz.  319), 

414,   451. 
Bogardus    (5  MSS.   D.   2),  454. 
Bole    Bros.    (12    Off.    Gaz.    939), 

418. 
Bovril     (L.    R.    1896,    2    Ch.    D. 

600),   97. 
Bowe    (50    MSS.    D.    168),    454. 
Brandreth    (1),    (Seb.   626),   87. 

93. 
Brandreth   (2),   (59  N.  Y.  Supp. 

1092),  229. 
Brand   Stove   Co.    (62   Off.   Gaz. 

588),    418. 
Brigham     (Comm.    Decis.    1881, 

p.    38),    418. 
Bromo-Celery  Co.    (Newton  Dig. 

190),    110. 
Brook     (26    W.    R.    791),    297. 
Burgoyne  (6  R.  P.  C.  227),  116. 
Bush  &  Co.    (10  Off.   Gaz.  164). 

98,   420. 
California    Fig    Syrup    Co.     (L. 

R.    40    Ch.    D.    620),    88,    799. 
Carter     Medicine     Co.      (L.     R., 

1892,    3    Ch.    D.    472),    799. 
Chetwood    (165  U.  S.   443),  400. 
Chichester    Chemical     Co.      (52 

Off.    Gaz.    1061),    455. 
Christiansen    (3    R.    P.    C.    54), 

262,    392. 

Coggin.   Kidder   &   Co.    (11    Off. 

Gaz.   1109),  420. 
Consolidated  Fruit  Jar  Co.    (14 

Off.    Gaz.    269),    420. 


lii 


TABLE  OF  CASES. 


Re  Cor-Re  Joh 


References  ar 

Re    Cornwall    (1),    (12    Off.    Gaz. 
138),   104,   420,  455. 
Cornwall     (2),     (12     Off.     Gaz. 

312),    99,    418. 
Densham     (L.    R.    1895,    2    Ch. 

D.    176),    116. 
Dibble    Mfg.    Co.    (18    MSS.    D. 

428),    451. 
Dick   &   Co.    (9    Off.   Gaz.    538), 

95,    419. 
Dole   Bros.    (12   Off.   Gaz.   939), 

89,  420. 
Dutcher  Temple  Co.  (Com.  Dec. 

1871,   p.    248),   57. 
Eagle  Pencil  Co.    (10  Off.  Gaz. 

981),    298,    413,    418. 
Eastman    (W.  N.  1880,  p.  128). 

101. 
Edinburgh    Correspondent  News- 
paper   (Ct.   of    Sess.   Cas.    1st 
Ber.  1,  new  ed.,  407,  n.),  168. 
English    (Comm.    Dec.    1870,    p. 

143),    413. 
Excelsior    Spring   Co.    (Newton 

Dig.    153),    110. 
Fairchild     (21    Off.    Gaz.    789), 

456. 
Farbenfabriken  T.  M.  K.   (L.  R. 

1894,   1   Ch.   D.   645),   115. 
Farina    (44  L.  T.  N.  S.  99),  28, 

172,    334. 
Farnum     &     Co.      (Comm.     De- 

cis.,   1880,  p.   155),   451. 
Finlayson,   Bousfield   &   Co.    (61 

Off.     Gaz.     152),     453. 
Fitzpatrick,    Davis     &     Co.    (18 

MSS.    D.    278),    451. 
Francis   &   Mallon    (Comm.    De- 

cis.    1871,    p.    283),    418. 
Glines   (8  Off.  Gaz.  435),  104. 
Godillot    (6  Off.  Gaz.  641),  411. 
Goodyear    Rubber    Co.    (11    Off. 
Gaz.    1062),    89,   417. 


e  to  pages. 

Re    Gordon    (12    Off.    Gaz.    517), 

418. 

Graham    (2    Off.    Gaz.    618),    93. 

Green     (8    Off.    Gaz.    729),    418. 

Grossmith     (60     L.     T.     N.     S. 

612),    99,    176. 
Grove      (67      Off.     Gaz.     1447), 

110,     418,     455. 
Hall     (13    Off.    Gaz.    229),    180, 

417. 
Haggenmacher     (60     Off.     Gaz. 

438),    450. 
Hankinson     (8     Off.     Gaz.     89), 

413,    414,    446,    452. 
Hanson's   Trade-mark    (5   R.   P. 

C.    130),    250. 
Harden  Fire  Extinguisher  Co.'s 
Trademark     (55     L.     J.     Ch. 
596),    91. 
Hauthaway    (Comm.    Dec.    1871, 

p.   97),   417. 
Heaton's   Trademark    (L.   R.   27 

Ch.    D.    570),    70. 
Hendley     (72    Off.    Gaz.    1654), 

455,   456. 
Holt  &  Co.    (L.  R.,  1891,  1   Ch. 

711),  104. 
Horsburgh    (53   L.   J.    Ch.   237), 

95,    261. 
Horton    (45    L.    T.    N.    S.    541), 

208. 
Hudson's   Trademark    (3    R.    P. 

C.   155),   57. 
Imbs    (10   Off.    Gaz.    463),   420. 
India  Rubber  Comb  Co.    (8  Off. 

Gaz.    905),    419,    420,   451. 
Jackson  Co.'s  Trademark    (6  R. 

P.    C.    80),   116. 
Jelley,    Son   &   Jones    (51   L.   J. 

Ch.    639),   268,   391. 
J.    Marsching    &    Co.     (15    Off. 

Gaz.   294),  455. 
Johnson    (2   Off.   Gaz.   315),   92, 
93. 


Re  Jon-Re  San 


TABLE   OF  CASES. 


liii 


References 

Re  Jones   (53  L.  T.  1),  27. 
Jordan   (49  Fed.  Rep.  238),  391. 
Kampfe     Bros.     (58     MSS.     D. 

306),    451. 
Kane   &  Co.    (9   Off.   Gaz.   105). 

243,    418. 
Keasbey    &    Mattison    Co.     (160 

U.    S.    221),    329,    331,    350. 
Kimball     (11    Off.    Gaz.    1109), 

414,   452. 
Knight    (38   MSS.   D.   341),  451. 
Kuhn    &    Co.'s    Trademark    (53 

L.   J.   Ch.   238),   375,   402. 
La    Soci6t6    Anonyme    des    Ver 
reries    de    I'Etoile    (10    R.    P. 
C.   436),   280. 
Lawrence    (10    Off.     Gaz.    163), 

119,    417. 
Leonard  &  Ellis'  Trademark  (26 

Ch.   D.   288),  79. 
Lisner    (13   Off.   Gaz.  455),   414, 

451. 
Maigen's  Application   (28  W.  R. 

759).    100. 
Manny  &  Co.  (17  MSS.  D.  155), 

451. 
Manske    &    Co.     (64    Off.    Gaz. 

858),    449. 
Maw,     Son     &     Thompson     (22 

MSS.    D.    403),    451. 
Meyerstein   (7  R.  P.  C.  114),  94. 
Mitchell    (L.    R.    7    Ch.    D.    36), 
297,  334. 

Moet   &   Chandon    (18    MSS.    U. 
259),    449. 

O'Donnell    (Fed.  Case  10,  434), 
445. 

Palmer    (L.   R.   21   Ch.    D.   47), 
354. 

Palmer's  Trademark  (24  Ch.  D. 
504),  79,  81,  88. 

Park  (12  Off.  Gaz.  2),  412,  413, 
419. 

Parker   (13   Off.  Gaz.  323),  411, 
418. 


are   to  pages. 

Re  Perry  Davis  &  Son    (58  L.  T. 
N.  S.  695),  7. 
Pierce    (23  MSS.   D.   16),   451. 
I'orter     Blanchard's     Sons 
(Comm.    Uecis.    1871,    p.    97), 
418,    420. 
Pratt   &   Farmer    (10    Off.    Gaz. 

866),    418. 
Price's    Patent    Candle    Co.   (L. 

R.  27  Ch.  D.  681),  93. 
Proctor,  Jr.   (51  Off.  Gaz.  1785), 

455. 
Rabone    (Seb.    642),    268. 
Rader    (13  Off.  Gaz.  996),  91. 
Rader    &     Co.     (Comm.     Decis. 

1878,   p.    67),   417,   419. 
Railton    (25  MSS.  D.  321),  118, 

455. 
Randell's      Estate      (8      N.      Y. 

Supp.    652),    188,    206. 
Rankinson   (8  Off.  Gaz.  89),  94. 
Richardson     (3    Off.    Gaz.    120), 

417,    418. 
Riviere's   Trademark    (L.   R.    26 

Ch.    D.    53),    337,    368. 
Roach    (10    Off.    Gaz.    333),    89, 

417. 
Roberts     (1),     (Comm.      Decis. 

1871,  p.  113),  420. 
Roberts      (2),      (Comm.     Decis. 

1871,  p.  100),  417,  420. 
Roberts     (3),      (Comm.     Decis. 
1871,    p.    101),    420. 

Rohland    (10  Off.  Gaz.  980),  99, 
418. 

Rotherham  (29  W.  R.  503),  115. 
Rothschild     (7    Off.    Gaz.    220), 
412,  453. 

Rowe  &  Post   (9  Off.  Gaz.  496), 

420. 

Rubber    Clothing    Co.     (lo    Off. 

Gaz.    Ill),    420. 
Rust    (29   W.   R.   393),   334. 
Sanitas    Co.    (4    R.    P.    c.    533), 

114. 


liv 


TABLE   OF  CASES. 


Re  Sau-Ric 


References  are  to  pages. 


Re  Saunion  &  Co.   (Cox,  625),  69, 

87. 
Schmidt    (53   MSS.   D.  7),  449. 
Simpson   &   Sons    (10   Off.   Gaz. 

333),    411. 
Snook    (2    Hilt.    566),    139. 
Speer's  Trademark   (4  R.  P.  C, 

521),   280. 
Swezy    (62  How.  Pr.   215),   26. 
Sykes    (43  L.  T.  N.  S.  626).  57. 
Talbot   (8  R.  P.  C.  149),  87. 
Tampa    Suburban    R.    Co.    (168 

U.    S.    583),    390. 
Thayer    (54   Off.  Gaz.   957),  453. 
Thewlis   &   Blakey's   Trademark 

(10  R.  P.  C.  369),  282,  289. 
Thomas      (14     Off.     Gaz.     821), 

417,    419. 
Tolle     (2    Off.    Gaz.    415),    354, 

417,     418. 
Vidvard  &  Sheehan   (8  Off.  Gaz. 

143),    413,    415. 
Volta    Belt    Co.     (8     Off.     Gaz. 

144),    414,    451. 
Warburg    &    Co.     (13    Off.    Gaz. 

44),  88,  418. 
Watson    (16  MSS.  D.  467),  452. 
Weaver    (10    Off.    Gaz.    1),    102, 

419,    454. 
Weil    (83   Off.   Gaz.   1802),  456. 
Weisman     (Newton    Dig.    119), 

118. 
Wellcome     (L.     R.     32     Ch.     D. 

213),    22,     32. 
Whitaker    (Newton's   Dig.   130), 

243. 
Whiteley    (43  L.  T.   N.   S.   627), 

268. 
Whyte     (Comm.    Dec.    1871,    p. 

301),    411. 
Worthlngton's    Trademark     (L. 

R.     14     Ch.     D.     8),     249,     282 
392. 
Read  v.  Richardson    (45  L.  T.  N. 
S.    54),    77,    281,    394. 


Reddaway     &     Co.     v.    Bentham 
Hemp    Spining    Co.    (9    R.    P. 

C.  503),    123,    262. 

V.    Banham    (L.    R.    1896,   A.    C. 
199),   11,   36,   124,    125,    157. 
Redgrave  v,   Hurd    (L.  R.    20   Ch. 

D.  1),    216. 

Reed  v.  West    (47  Tex.  240),  174. 
Reeder    v.    Brodt     (6    Ohio     Dec. 

248),     96,    331. 
Reeves   v.    Denicke    (12   Abb.    Pr. 

N.   S.   92),   24,   197. 
Regina    v.    Closs    (D.    &    B.    460), 
345. 
V.   Dundas    (6  Cox,  380),  345. 
V.    Gray    (Seb.    183),    345. 
V.    Smith    (D.   &   B.    566),    345. 
V.   Sutter    (10   Cox,  577),  345. 
Regis  V.  J.  A.  Jaynes  &  Co.    (185 

Mass.   458),   256. 
Rehbein    v.    Weaver      (133      Fed. 

Rep.    607),    320. 
Reinhart  v.    Spaulding    (49   L.    J. 

Ch.   57),    100. 
Republic    of    Peru   v.    Reeves    (40 

N.   Y.   Sup.   Ct.   316),   336. 
Renter's    Telegram    Co.    v.    Byron 

(43    L.    J.    Ch.    661),    226. 
Reynolds  v.  Bullock   (47  L.  J.  Ch. 

773),    194. 
R.    Heinisch's    Sons   Co.   v.    Boker 
(86    Fed.    Rep.    765),   43,    137, 
146. 
Ricard   v.    Caton   College  Co.    (92 

N.    W.    Rep.    958),    279. 
Richards  V.  Butcher    (L.   R.   1891, 
2    Ch.    D.    522),   89. 
V.    Hunt     (65    Ga.    342),    212. 
V.   Peacock    (33   N.  J.  Eq.   606), 
209. 
Richardson     &     Boynton     Co.     v. 
Richardson  &   Morgan   Co.    (8 
N.    Y.    Supp.    53),    168. 
Richmond    Nervine    Co.    v.    Rich- 
mond    (159    U.     S.     293),     24, 
767. 


Ric-Ryd 


TABLE   OF  CASES. 


Iv 


References 

Richter    v.    Anchor    Remedy    Co. 

(52    Fed.    Rep.    455),    20,    62, 

322. 
V.   Reynolds    (8   C.   C.   A.    220). 

20,    22,    184,    322,    451. 
Rillet  V.   earlier    (61   Barb.   435), 

100,    119. 
Rivero  v.  Norris    (Seton,  4th  ed., 

236),  339. 
Roberson     v.     Rochester    Folding 

Box     Co.      (65     N.     Y.     Supp. 

1109),  241. 
V.    Rochester    Folding    Box    Co. 

(71    N.   Y.   Supp.   876),    241. 
V.    Rochester    Folding    Box    Co. 

(171     N.     Y.     538),     232,     236, 

237,  241. 
Roberts    v.    Sheldon     (Fed.    Case 

No.   11,916),    103,   287,   338. 
Robertson  v.  Berry   (50  Md.  591), 

162,  253. 

V.     Quiddington      (28     Beavan, 
529),    192. 

Robinson  v.   Finlay    (L.  R.   9  Ch. 
D.    487),    27,    57,    181,    296. 
V.    Storm    (103    Teun.    40),    145. 

Rodgers  v.  Nowill  (1),  (6  Hare, 
325),  143,  255,  351,  402. 

V.    Nowill     (2),    (Cox,    Manual. 
No.    115),   398,   399. 

V.   Philip    (1  Off.  Gaz.   29),   354. 

V.    Rodgers     (31     L.    T.    N.     S. 
285),    272. 

Rogers  v.  Rogers  (53  Conn.  121), 
145. 

V.   Taintor    (97   Mass.    291),    25, 
27,    143. 

Rogers  Co.  v.  Wm.  Rogers  Mfg. 
Co.  (17  C.  C.  A.  576),  145, 
156. 

Rogers     Mfg.     Co.     v.     Rogers     & 


are  to  pages. 

Spurr     Mfg.     Co.      (11      Fed. 

Rep.   495). 
Rolt   V.   Bulmer    (Seb.   614),  194. 
Root   V.    Railway   Co.    (105   U.   S. 

189),    363. 

Ropes  V.   Upton    (125  Mass.   258). 
214. 

Rose  V.  Henley  (47  L.  J.  Ch.  577), 
294. 
V.    Henly    (Seb.    551),    273. 
V.    Loftus    (47    L.    J.    Ch.    576), 
271,    274,    294,    333,    404. 
Rosing   V.    Atkinson    (27    Sol.    J. 
534),  99. 

Rowland  v.  Mitchell    (L.  R.   1897, 
1   Ch.   D.   71),   7. 

Rowley   v.    Houghton    (2    Brewst. 

303),  100. 
Royal     Baking     Powder     Co.     v. 

Davis     (26     Fed.     Rep.     293), 

249,  253. 
V.     Raymond      (70     Fed.     Rep. 

376),    3,    103,    135,    176,    177. 
V.  Royal   (58  C.  C.  A.  499),  145. 
V.    Royal    Chemical    Co.    (Price 

&    Steuart,    1),    792. 
Roy    Watch    Case    Co.    v.    Camm- 

Roy   Watch    Case   Co.    (50    N. 

Y.     Supp.     979),     288. 
Rumford    Chem.    Works   v.    Muth 

(35    Fed.    Rep.    524),    87,    109. 
Rupp    V.    Over    (3    Brewst.    133), 

198. 
Russell  V.  Lundeen    (72  Off.   Gaz. 

420),    224. 

Russia   Cement  Co.   v.   Frauenhar 
(126    Fed.    Rep.    228),    276. 
V.    Katzenstein    (109    Fed.    Rep. 
314),    101,     276. 

V.   LePage   (147  Mass.   206),   24. 
140,    144,    148,   193,   373. 
Ryder    v.    Holt    (128    U.    S.    525), 
321,    328,    350,    461. 


Ivi 


TABLE   OF  CASES. 


Sal-Sch 


s 


References  are  to  pages. 

(179    U.    S.    19),    20,    33,    100, 


Salinger  v.  Salinger  (45  Atl.  Rep. 

558),  215. 
Salomon   v.    Hertz    (40   N.   J.   Eq. 

400),   220,  221,   222. 
Samuel  v.  Berger   (24  Barb.  163), 

354. 
Samuel   Bros   &   Co.   v.    Hostetter 

Co.    (55    C.    C.    A.    Ill),    273. 
Samuels    v.     Spitzer     (177     Mass. 

226),    286. 
Sanders    v.    Jacob    (20    Mo.    App. 

96),    172. 
Sanitas    Co.    v.    Condy    (4    P.    R. 

195),   288. 
Sanitas    Nut    Food    Co.    v.    Cemer 

(96    N.    W.    Rep.    454),    223. 
Santa   Fe    Electric    Co.   v.    Hitch- 
cock   (50  Pac.  Rep.  332),  194. 
Sarrazin  v.  W.  R.  Irby  Cigar  Co. 

(35   C.   C.  A.  496),  14,  16,  23, 

60,    101,    322,    449. 
Sartor    v.    Schaden     (101    N.    W. 

Rep.    511),    7. 
-V.   Smith    (101  N.  W.  Rep.  515), 

301. 
Sawyer  Crystal  Blue  Co.   v.  Hub- 
bard  (32  Fed.  Rep.  388),  260, 

273,    294. 
Sawyer  v.  Horn   (1  Fed.  Rep.  24), 

38,    254,    295,    383,    419. 
V.    Kellogg    (1),     (7    Fed.    Rep. 

720),    82,    146,    243,    253,    288, 

303,    338,    375. 
V.    Kellogg    (2),    (9    Fed.    Rep. 

601),    176,    288,    303,    338,    375, 

382,    383,    402,    403. 
Saxby  v.  Easterbrook   (Cox,  Man- 
ual,   606),    47. 
Saxlehner  v.   Apollinaris   Co.    (L. 

R.  1897,  1  Ch.   D.  893),  406. 
V.  Eisner  &  Mendelson  Co.    (1), 
(88  Fed.  Rep.   61),  277,  405. 
V.  Eisner  &  Mendelson  Co.   (2), 

(91    Fed.    Rep.    536),    20,   33. 
V.  Eisner  &  Mendelson  Co.   (3), 


173,   179,   183,   376,    772. 

V.  Eisner  &  Mendelson  Co.   (4), 

(138   Fed.  Rep.  22),  384,  386. 

V.  Nlelson    (179   U.   S.  43),   173. 

V.   Siegel-Cooper  Co.    (179  U.  S. 

42),   257,   378. 

Scheer   v.   American    Ice   Co.    (66 

N.   Y.    Supp.   3),  210. 
Schendel     v.     Silver     (18     N.     Y. 

Supp.  1),  102,  287. 
Schenker  v.   Auerbach    (85   N.   Y. 
Supp.    129),   244.       y^^T?-   V  i^" 
■^Scheuer    v.    Muller_,^^(20    C.    C.    A. 
161),  45,   136,  137. 
Schmalz  v.  Wooley    (57  N.  J.  Eq. 

303),  638. 
Schmidt  v.  Brieg    (100   Cal.   672), 
94. 
V.   Crystal   Soda  Water  Co.    (35 

Pac.    Rep.    855),    94. 
V.    Haake    (35    Pac.    Rep.    855), 

94. 
V.  Liberty  Soda  Works  Co.    (35 

Pac.    Rep.    856),    94. 
V.  McEwen   (35  Pac.  Rep.  854), 

94. 
V.   Steinke    (35   Pac.   Rep.   856), 
94. 
Schneider   v.   Williams    (44    N.   J, 

Eq.    391),    56,    64,    361,    419. 
Schrauder     v.     Beresford     &     Co 

(Browne,     661),     61. 
Schumacher   v.    Marble    (3    Mack- 
ey,    32). 
V.  Schwenke  (1),   (26  Fed.  Rep. 

818),  328,  350,  365,  461. 
V.   Schwenke    (2),    (36  Off.   Gaz. 
457),   354,   365,   413,   460. 
Schumacher   &   Ettlinger  v.   Wog- 
ram    (35  Fed.  Rep.   210),  412, 
413. 
Schuyler  v.  Curtis   (1),    (19  N.  Y. 
Supp.    264),    233. 
V.   Curtis    (2),    (24   N.  Y.   Supp. 
509),  235. 


Sch-Sin 


TABLE   OF  CASES. 


Ivii 


Schuyler  v.  Curtis    (3),    (64   Hun. 
594),  235. 
V.  Curtis   (4),    (147  N.  Y.  434), 
236. 
Schwarz    v.    Superior    Court    (111 

Cal.   106),   399.   400. 
Schweitzer    v.    Atkins     (37    L.    J. 

Ch.    847). 
Scott  V.    Mackintosh    (1    V.   &   B. 
503),   188.   209. 
V.    Rowland     (20    W.    R.    208), 

24,  188. 
T.    Standard    Oil    Co.    (106    Ala. 
475),    90,     274. 
Scriven   v.    North    (124   Fed.   Rep. 
894),    44,    89. 
V.    North    (134    Fed.    Rep.   366). 
44. 
Seabury  v.   Grosvenor    (Fed.  Case 

No.   12,576),   70,   460. 
Seaman     v.     Johnson     (106     Fed. 

Rep.   915),   83. 
Seely    v.    Fisher    (11    Sim.    581), 

46,  47. 
Seixo  V.  Provezende   (L.  R.  1  Ch. 

D.  192),  129,  264,  280,  292. 

Selchow   V.   Baker    (93  N.  Y.   59), 

104,   181. 

V.   Chaffee  &   Selchow   Mfg.   Co. 

(132  Fed.   Rep.   996),  93,  118. 

Seltzer  v.  Powell    (8  Phila.   296), 

104. 
Sen-Sen    Co.    v.     Britten     (L.    R. 

1899,  1  Ch.  D.  692),  74. 
Schackle  v.  Baker    (14  Ves.  468), 

189. 
Shaver  v.   Heller  &  Merz  Co.    (48 
C.  C.  A.  48),  182,  376. 
V.    Shaver    (54    la.    208),    4,    58, 
145,   361,   373. 
Shaw  V.  Pilling   (175  Pa.  St.  78), 

256,    360,    394. 
Shaw   Stocking   Co.   v.   Mack    (12 
Fed.    Rep.    707),    5,    103,    288, 
294,   296,   297. 


References  are  to  pages. 

Sheldon    v.    Houghton    (5    Blatch. 

285),    189. 
Sheppard     v.     Stuart     (13     Phila. 

117),   62,   99,   114,    182. 
S.  Hernsheim  Bros.  &  Co.  Ltd.  v. 
J.    H.    Hargrave    &    Son     (81 
Off.  Gaz.  503),  458. 
Sherwood   v.   Andrews    (5  Am.   L. 
R.   N.  S.  588),  24,  71,  91,  180. 
V.   Horton,  Cato  &  Co.    (84   Off. 
Gaz.    2018),    60,    320. 
Shipwright  v.  Clements  (19  W.  R. 

599),   23,   25,   178,   194. 
Shook     V.     Wood     (32     Leg.     Int. 

264),    171. 
Shrimpton    v.    Laight     (18    Beav. 

164),   266,   376. 
Sibley  Soap  Co.  v.  Lambert  Phar- 
macal     Co.      (103     Off.     Gaz. 
2172),     325. 
Siegert   v.    Abbott    (1),    (61    Md. 
276),    24,    70,    71,    353. 
V.   Abbott    (2),    (79    N.   Y.    Sup. 

Ct.    243),    87,   119. 
V.   Abbott    (4),    (72   Hun,    243), 

353,   453. 
V.   Ehlers    (Seb.   432),   119,   338. 
V.    Findlater    (L.    R.    7    Ch.    D. 

801),  87,  119,  219,  338. 
V.    Lawrence     (11    Vict.    L.    R. 
47),    338,    375. 
Simmons  Hardware  Co.  v.  Waibel 

(1    So.    Dak.    488),    226. 
Simmons   Med.    Co.     v.     Simmons 
(81  Fed.  Rep.  163),   223,   224. 
Simpson   v.   Wright    (1),    (15   Off. 
Gaz.    248),    421. 
V.    Wright     (2),     (15    Off.    Gaz. 
293),    417,    421. 
Singer   Mfg.   Co.  v.   Bent    (163   U. 
S.   205),   79,   82,   109,   121,  122, 
141. 


V.    Brill     (Cox,    Manual,    672), 
121. 


V.     Charlebois     (16     Rap. 
Q.   C.   S.   167),   81. 


Jud. 


Iviii 


TABLE   OF  CASES. 


Sin-Soc 


Singer    Mfg.    Co.    v.    Hippie    (109 

Fed.   Rep.    152),   78. 

V.    June    Mfg.    Co.    (163    U.    S. 

169),  78,  79,  80,  94,  109,  121, 

122,   140,    145,   159,    183. 

V.  Kimball  &  Morton    (Ct.  Sess. 

Cas.   Srd  ser.   XI,   267),  62. 
V.     Larsen      (Fed.     Case      No. 

12,902),   79,   141. 
V.  Loog    (L.  R.  18  Ch.  D.  412), 

121,   256,   292,   332,   373. 
V.    Loog    (L.    R.    8    A.    C.    15), 

347,    351. 
V.  Riley   (11  Fed.  Rep.  706),  79. 
V.    Stanage    (6    Fed.    Rep.    279), 

78. 
V.     Wilson     (L.     R.     2     Ch.     D. 
434),    57,    59,     253,    256,    267, 
349. 
Singleton  v.  Bolton  (3  Doug.  293), 

28,   43,  255. 
S.    Jarvis    Adams    Co.    v.    Knapp 

(58  C.  C.  A.  1),  231. 
Skinner    v.    Oakes    (10    Mo.    App. 

45),    22,    35,    148. 
Slack     V.     Suddoth     (102     Tenn. 

375),    193. 
Slater  v.   Banwell    (50   Fed.   Rep. 
150),  396. 
V.   Merritt    (75  N.  Y.    268),   400. 
Slazenger    v.    Feltham     (6    R.    P. 

C.    531),    253,    282. 
Sleepy    Eye   Milling   Co.    v.    C.    F. 
Blanke  Tea  &  Coffee  Co.    (85 
Off.  Gaz.  1905),  60,  101,  320. 
Small  V.   Sanders   (118  Ind.  105), 

331. 
Smalley   v.   Greene    (52    la.    241), 

191. 
Smith   V.   Adams    (6   Paige,    435), 
120. 
V.    Carron   Co.    (13   P.   R.   108), 

289. 
V.    Everett     (27    Beavan,    446), 

188,    206. 
V.  Fair    (14  Ont.   Rep.   729),  22. 


References  are  to  pages. 

Smith    V.    Gibbs    (44    N.    H.    335), 
198. 
V.  Imus   (32  Alb.  L.  J.  455),  22, 

129,    299. 
V.   Mason    (W.  R.   1875,   p.   62), 

103 
V.     Reynolds     (Fed      Case     No. 

13,098),   370,  414,   415,   417. 
V.   Sixbury    (25   Hun,  232),  102, 

110. 

V.  Walker    (37   Mich.   456),   129. 

V.     Woodruff     (48     Barb.     438), 

69,    104. 

Smith  &  Davis  Mfg.  Co.  v.  Smith 

(89   Fed.   Rep.   486),   296,   297. 

Smith-Dixon    Co.    v.    Stevens    (59 

Atl.    Rep.    401),    379,   583. 
Snider  v.  McKelvey   (27  Ont.  App. 

339),   214. 
Snodgrass  v.  Wells    (11   Mo.  App. 

590),    17,    21,    24. 
Snow    v.    Holmes    (71    Cal.    142), 

207,   216. 
Snowden   v.    Noah    (Hopkins'    Ch. 

347),    3,    36,    165,    168. 
Snyder    Mfg.    Co.    v.    Snyder    (54 

Ohio   St.   86),   23,   210. 
Social   Register   Ass'n   v.   Howard 
(60  Fed.  Rep.  270),   104,   168. 
V.  Murphy   (128  Fed.  Rep.  116), 
168,   291. 
Societe  Anonyme  v.  Baxter    (Fed. 
Case  No.   8099),    268. 
V.    Western    Distilling    Co.    (1), 
(43    Fed.    Rep.    416),   97,    119, 
122. 
V.    Western    Distilling   Co.    (2), 

(46    Fed.   Rep.   921),   386. 
V.    Western    Distilling    Co.    (3), 
42   Fed.   Rep.    96),    399. 
Society,   etc.   de  la   Benedictine  v. 
Micalovitch     (36    Alb.    L.     J. 
364),    97,    413,    453. 
Societe     des     Huiles     d'Olive     de 
::ice    v.    Rorke      (31     N.     Y. 
Supp.  51),  379. 


Soc-Ste 


TABLE   OF  CASES. 


Ux 


References 

Society   of  Accountants   v.   Corpo- 
ration    of     Accountants      (20 

Scot.     Sess.     Cas.,     4th     ser., 

750),    335. 
Sohier  v.  Johnson  (111  Mass.  238), 

23,    30. 
Sohl    V.     Geisendorf     (1     Wilson, 

Ind.,    60),    177,    297. 
Solis  Cigar  Co.  v.  Pozo   (16  Colo. 

388),    25.    116. 
Somerville    v.     Schembri     (L.     R. 

21   App.    Cas.    453),    374. 
Sorg  V.  Welsh   (16  Off.  Gaz.  910), 

104,   412,   414. 
South   Carolina   v.    Seymour    (153 

U.    S.    353),    446. 
Southern  v.  How    (Popham,  144), 

13,  36. 
Southern  White  Lead  Co.  v.  Cary 

(25  Fed.  Rep.   125),   136,  137, 

288. 
V.     Coit     (39     Fed.     Rep.     492), 

136,   137. 
Specific    Med.    Co.    v.    Wenz     (14 

Fed.  Rep.  250),  5. 
Sperry    v.     Percival    Milling    Co. 

(81    Cal.    252),    249,    253,    285, 

392. 
Spice   V.    James    (Seb.    46).    190. 
Spieker    v.    Lash    (102    Cal.    38), 

92,    148. 
Spier   V.    Lambdin    (45    Ga.   319), 

199. 
Spratt  V.  Jeffery  (10  B.  &  C.  249), 

189. 
Spring    Valley    Water    Works    v. 

Schottler    (62    Cal.    69),    193. 
Stachelberg    v.    Ponce     (1),     (23 

Fed.  Rep.  430),  71,  101,  353. 
V.   Ponce    (2),    (128  U.   S.   686), 

92,    261,   353,   460. 
Standinger     v.     Standinger      (19 

Leg.    Int.    85),    141. 
Starey    v.    Chilworth    Gunpowder 

Co.    (L.   R.    24   Q.    B.    D.    90), 

68. 


are  to  pages. 

State   V.    Barnett    (159    Ind.    432), 

564. 
V.    Berlinsheimer    (62    Mo.   App. 

165),    56. 
V.    Bishop     (128    Mo.    373),    57, 

616. 
V.    Gibbs    (56   Mo.    133),   19,    51, 

62,    616. 
V.    Hagen     (6    Ind.    App.    167), 

56,    563. 
V.  Mason  (38  Pac.  Rep.  130),  48. 
V.  McGrath    (92  Mo.  357),  151. 
V.     Niesmann      (101     Mo.     App. 

507),    616. 
V.   Schmidt    (48  Atl.   Rep.   588), 

638. 
V.  Thierauf    (167  Mo.  429),  616. 
V.    Wright    (159    Ind.   394),   563. 
State   of   Pennsylvania   v.   Wheel- 
ing   &     Belmont    Bridge     Co. 

(59    U.    S.    421),    344. 
Steinthal    v.    Samson    (Seb.    546), 

114. 

Steinway    v.    Henshaw     (5    P.    R. 

77),    288. 
Stephens  v.  DeConto    (4  Abb.  Pr. 

N.    S.    47),    101,    167,    168. 
V.    Peel    (16    L.    T.    N.    S.    145), 

288. 
Sterling    Remedy    Co.    v.    Eureka 

Mfg.    Co.    (1),    (70   Fed.    Rep. 

704),  45,  102. 
V.    Eureka    Mfg.    Co.     (2),     (25 

C.  C.  A.  314),  97,  290. 
V.   Gorey    (110   Fed.   Rep.   372), 

283,    301. 
V.  Spermine  Med.  Co.    (50  C.  C. 

A.    657),    283,    387. 
Sternberger  v.  Thalheimer    (3  Off. 

Gaz.   120),  98,  416. 
Steuart    v.    Gladstone    (L.    R.    10 

Ch.    D.    646),   194. 
Stevens  Linen  Works  v.   William 

&  John   Don  &  Co.    (121  Fed. 

Rep.    171),   42,   298,   393. 


Ix 


TABLE   OF  CASES. 


Ste-Ter 


References  are  to  pages. 

Stewart   v.    Challacombe    (11    lU. 
App.  379),  215. 
V.  Einstein    (64  Off.  Gaz.  1533), 

335. 
V.     Hook     (118    Ga.     445),    220, 

223. 
V.    Smithson    (1    Hilt.    119),   74, 

76. 
Stirling    Silk    Mfg.    Co.    v.    Ster- 
ling   Silk    Co.     (46    Atl.    Rep. 

199),  78. 
St.  Louis  Piano  Mfg.  Co.  v.  Mer- 

kel    (1    Mo.    App.    305),    59. 
St.   Louis    Stamping   Co.   v.    Piper 

(33   N.    Y.    Supp.   443),   90. 
Stokes    V.    Allen    (9    N.    Y.    Supp. 

846),    104. 
V.  Landgraff   (17  Barb.  608),  89, 

90,  92,  93,  107. 
Stokes    Bros.    Mfg.    Co.    v.    Heller 

(56   Fed.   Rep.    297),   229. 
Stone    V.    Carlan     (Cox,    Manual, 

No.   104),    312. 
V.  Goss    (55  Atl.  Rep.  736),  223. 
Stonebraker    v.    Stonebraker     (33 

Md.    252),   144. 
Stoughton   V.    Woodard    (39    Fed. 

Rep.    902),  99. 
Strasser   v.    Moonelis    (108    N.    Y. 

611),   56,    419. 
Stuart   V.   F.    G.   Stewart  Co.    (85 

Fed.    Rep.    778),    145,    146. 
V.   F.  G.   Stewart  Co.    (33  C.  C. 

A.  480),  145,  146,  288,  301. 
Stuart  &   Co.   V.    Scottish   Val   de 

Travers  Paving  Co.   (Ct.  Sess. 

Cas.,   4th   ser.,   13,    1),    90. 
Swift  V.  Day   (4  Robertson,  611), 

267,  399. 
V.    Peters    (11    Off.    Gaz.    1110), 

421. 
Swift  &  Co.  V.  Brenner   (125  Fed. 

Rep.    826),    45.    287. 
V.    Groff    (114    Fed.    Rep.    605), 

371. 


Sykes  v.  Sykes   (3  B.  &  Cr.  541), 

73,   255,  333,   348. 
Symington  v.  Footman    (56  L.  T. 

N.  S.  696),  91. 
Symonds  v.  Greene   (28  Fed.  Rep. 

834),    99,    327,    329,    350,    380, 

396,    461. 
V.  Jones    (82  Me.  302),  24. 

T 

Taendsticksfabriks       Aktiebolaget 

Vulcan    V.    Myers     (11    N.    Y. 

Sup.   663),  277. 

V.   Myers    (139   N.  Y.   364),   105, 

375,  378. 

Talbot  V.  Webley  (3  R.  P.  C.  276), 

97. 
Talcott    V.    Moore    (6    Hun,    106), 

168,    404. 
Tarrant  &   Co.   v.   Hoff    (22   C.    C. 

A.    644),   24,   68. 
Taylor   v.    Ashton    (11    M.    &    W. 
402),  255. 
V.  Bemis  (Fed.  Case  No.  13779), 

17,    22. 
V.      Bothin      (Fed.      Case     No. 

13780),  27,  52. 
V.    Carpenter     (1),      (3     Story, 
458),     19,     62,     103,    172,    374, 
749. 
V.   Carpenter    (2),    (2   W.  &   M. 
1),  19,   120,  172,  175,  177,  295, 
351,    355. 
V.  Carpenter   (3),   (2  Sandf.  Ch. 
603),    14,     19,    266,     295,    358, 
373. 
V.  Gillies    (59  N.  Y.  331),  90. 
V.   Howard    (110  Ala.  468),  214. 
V.    Taylor    (L.    R.    2    Eq.    290), 
144,   261,   301. 
T.   B.   Dunn  Co.  v.  Trix  Mfg.   Co. 

(63   N.   Y.    Supp.   333),   394. 
Telephone     Mfg.     Co.     v.     Sumter 
Mfg.  Co.    (63  S.  C.  313),  129. 
Territory  v.  Guyott   (9  Mont.  46), 
448. 


I 


Tet-Twe 


TABLE   OF  CASES. 


Ixi 


References 

Tetlow    V.    Savournin     (15    Phila. 

170),    222. 
V.   Tappan    (85   Fed.   Rep.   774), 

21,    58,    63,    65,    104,    180. 
Thackeray  v.  Saxlehner   (60  C.  C. 

A.  562),  174. 
The    Amiable    Nancy     (3    Wheat. 

546),  358. 
The    Collins    Co.    v.    Oliver    Ames 

&    Son    Corporation    (18    Fed. 

Rep.  561),  269. 
The   Fair   v.   Jose   Morales   &   Co. 

(82    111.   App.    499),   21. 
Thedford    Medicine    Co.    v.    Curry 

(96   Ga.   89),  332. 
The    Peck    Bros.    &    Co.    v.    Peck 

Bros.   Co.    (51   C.   C.   A.   251), 

156. 
Thomas  G.  Plant   Co.   v.  May  Co. 

(100  Fed.  Rep.   72),   103. 
V.    May   Co.    (44   C.    C.   A.   534), 

8,   103,   161. 
Thompson    v.    Andrus     f73    Mich. 

551),   188. 
V.    Mackinnon     (2    Steph.    Dig. 

726),    23. 
V.  Montgomery   (1891,  App.  Cas. 

217),  132. 
Thompson    v.    Winnebago    County 

(48   Iowa  155),   188. 
Thompson     &    Co.    v.     Robertson 

(Ct.  Sess.  Cas.,  4th  ser.,  XV, 

880),   56. 
Thomson  v.  Winchester   (36  Mass. 

214),    37,    95. 
Thorley's  Cattle  Food  Co.  v.  Mas- 

sam   (42  L.  T.  N.  S.  851),  47, 

144. 

Thornbury     v.    Bevill     (1     Y.    & 
C.  Ch.  554),   191. 

Thornton    v.    Crowley    (47    N.    Y. 

Super.    Ct.    527),    261. 
Thum    Co.     V.     Tloczynski      (114 

Mich.   149),   222. 


are  to  pages. 

Thynne  v.   Shove    (L.  R.   1890,   45 

Ch.   D.  577),  24,  143,  148,  197. 
Tichenor     v.     Newman     (186     111. 

264),    192. 
Tode    V.    Gross    (127    N.    Y.    480), 

213. 
Towle    V.    Spear    (7    Penn.    L.    J. 

176),   69,   95. 
Tonge   V.    Ward    (21    L.    T.    N.    S. 

480),    289,    338,    374,    404. 
Town   V.    Stetson    (4   Abb.    Pr.    N. 

S.   218),   89,   107. 
Townsend     v.      Hurst     (37     Miss. 

679),   217. 
Tracy  v.  Banker    (170  Mass.  266), 

56,    591. 
Trade-mark  Cases   (100  U.  S.  82), 

14,    16,    58,    63,    341,    313,    314, 

411,   445. 
Trask    Fish    Co.    v.    Wooster    (28 

Mo.   App.   408).   94. 
Trego  V.   Hunt    (65   L.   J.   Ch.   1), 

197,   206. 
Trisdorfer    &    Co.     v.     Estate    of 

Bassett     (60    MSS.    D.,    Sept. 

1896),  63. 
Tuck   &   Sons   v.   Priester    (L.    R. 

19    Q.    B.    D.    629),    79,    225. 
Tucker     Mfg.     Co.     v.     Boyington 

(Fed.     Cas.    No.     14229),     95, 

261. 

Tuerk  Power  Co.  v.  Tuerk  (36 
N.    Y.    Supp.   384),    145. 

Turner  v.  Evans  (2  El.  &  El. 
512),  208. 

V.   Major    (3   Giff.   442),  24,  188. 
Turton    &    Sons.    Ltd.    v.    Turton 

(L.  R.  42  Ch.  D.  128),  143. 
Tussaud    V.    Tussaud     (38    W.    R. 
440),    23,    143,    145. 

Tuttle  V.  Blow   (176  Mo.  158),  34. 
Twentsche    Stoom    Bleekery   Goor 

V.    Ellinger     (26    W.    R.    71), 

338,    374,    375. 


bdi 


TABLE   OF  CASES. 


Uni-Vol 


References  are  to  pages. 


u 


Union    Paper    Collar    Co.    v.    Met- 
ropolitan  Collar   Co.,   Ltd.    (3 
Daly,   171),  396. 
United   States  v.   Braun    (39   Fed. 
Rep.    775),    60,    321,    342,   445. 
V.    Campe    (89    Fed.    Rep.    697), 

344. 
V.   Duell    (17   App.   Cas.   D.   C), 

459. 
V.   Holliday    (3   Wall.   407),  448. 
V.    Koch     (40    Fed.    Rep.    250), 

342,   445. 
V.  Loeb   (49  Fed.  Rep.  636),  344. 
V.   Marble    (3   Mackey   32),   426. 
V.    Marble    (22    Off.    Gaz.    1366), 

412,   413,   426. 
V.   National   Lead   Co.    (75   Fed. 

Rep.   94),    396. 
V.    132    Packages    of    Spirituous 
Liquors  and  Wines    (22  C.  C. 
A.   228),  344. 
V.   132   Packages    (65   Fed.  Rep. 

980),   344. 
V.    Roche      (1     McCrary,    385), 

411,    422. 
V.  Seymour   (66  Off.  Gaz.  1167), 

453,   457,  458. 
V.  Steffens    (100  U.  S.  82),  421. 
V.    Upham    (43    Fed.    Rep.    68), 
450. 
United  States  Cordage  Co.  v.  Wm. 
Wall's     Sons     Rope    Co.     (90 
Hun   429),   218. 
Upmann    v.    Currey     (29    Sol.    J. 
735),  339,  374. 
V.    Elkan    (L.    R.    12    Eq.    140), 

263,    338,   339,    403. 
V.    Forester    (L.    R.    24    Ch.    D. 
231),    263,   339,    369,    370,    374, 
375,  403. 
Upper  Assam  Tea  Co.  v.  Herbert 

(7    R.    P.    C.   183),    282. 
Uri    V.    Hirsch     (123     Fed.     Rep. 
568),   70. 


y 


Vacuum    Oil    Co.    v.    Climax    Re- 
fining  Co.    (56    C.    C.    A.   90), 
158. 
V.  Eagle  Oil  Co.   (122  Fed.  Rep. 
105),  304. 
Valentine   v.   Valentine    (31   L.   R. 

Ir.   488),   406. 
Van    Beil    v.    Prescott    (85    N.    Y. 

630),  94. 
Van  Camp  Packing  Co.  v.  Cruik- 

shanks    Bros.    Co.    (33    C.    C. 

A.    280),    243,    253,   379. 
Vanden   Bergh  &   Co.   v.   Belmont 

Distillery    Co.     (99    Off.    Gaz. 

1624),  324. 
Van    Dyke    v.    Jackson    (1    E.    D. 

Smith,    N.    Y.,    419),    212. 
Van  Hoboken  v.  Mohns  &  Kalten- 

bach   (112  Fed.  Rep.  528),  96, 

274,  392. 
Van    Horn   v.    Coogan    (52    N.    J. 

Eq.   380),  103,   124,   287. 
Van    Houten   v.    Hooton    Cocoa   & 

Chocolate  Co.    (130  Fed.  Rep. 

600),  310. 
Van    Stan's    Stratena   Co.    v.    Van 

Stan   (58  Atl.  Rep.  1064),  2.9. 
Verges    v.    Forshee    (9    La.    Ann. 

294),    215. 
Viano   v.   Baccigalupo    (183   Mass. 

160),    272. 
Vickery  v.  Welsh   (19  Pick.  523), 

219. 
Victor    Talking    Machine    Co.    v. 

Armstrong      (132     Fed.     Rep. 

711),    243,   244. 
Vitascope    Co.    v.    United    States 

Phonograph  Co.   (83  Fed.  Rep. 

30),   45,  105. 
Vogt  V.  People   (59  111.  App.  684), 

346,    558. 


iVon-Web 


TABLE   OF  CASES. 


Ixiii 


References  are   to  pages. 


Vonderbank    v.    Schmidt    (44    La. 

Ann.    264),   206,   311. 
Von    Faber    v.    Faber     (124    Fed. 

Rep.  603),  143. 
Von    Mumm    v.    Frash     (56    Fed. 
Rep.   830),  137,   249,  267,  391. 
V.    Kirk     (40    Fed.    Rep.    589), 

249. 
V.     Steinmetz     (137    Fed.     Rep. 

168),    173. 
V.     Witteman      (1),      (85     Fed. 

Rep.    906),    243,    253,    260. 
V.  Witteman   (2),    (33  C.   C.  A. 
404),   243,    253. 
Vulcan    Detinning    Co.    v.    Amer- 
ican   Can    Co.    (58    Atl.    Rep. 
290),  .230. 

w 

W.  A.  Gaines  &  Co.  v.  E.  Whyte 

Grocery,    Fruit    &    Wine    Co. 

(107    Mo.    App.    507),    102. 
V.  Leslie   (54  N.  Y,   Supp.  421), 

102,  287, 
Wagner    v.    Daly    (97    Hun,    477), 

64. 

Walker    v.    Alley    (13    Grant    Up. 

Can.  Ch.  366),  278. 
V.   Mikolas    (79   Fed.   Rep.   955), 

283. 
V.  Reid    (Fed.  Case  No.  17084), 

95,   299. 

Wallach    v.    Whigmore    (87    Fed. 

Rep.  469),  53,  334,  353. 

Wallis  V.  Wallis   (4  Dr.  458),  375. 

Walter   Baker  Co.   v.   Baker    (1), 

(77  Fed.  Rep.  181),  135,  285. 

V.    Baker    (2),     (87    Fed.    Rep. 

209),   373. 
V.    Sanders    (26    C.    C.    A.    220), 
35,   377,   386,   397. 

V.  Slack    (65  C.  C.  A.  138),  385, 
386. 


Walton    V.     Crowley     (Fed.    Case 

No.    17133),    32,   61,    266. 
Wamsutta     Mills     v.     Allen     (12 

Phila.    535),    269,    289. 
Ward  V.  Drat  (Cox,  Manual,  607), 

46. 
V.    Robinson     (L.    R.    9    Ch.    D. 

487),   27,   181. 
Warfield    v.    Booth    (33    Md.    63), 

192. 
Waring  v.  Cox  (1  Camp,  369),  15. 
Warner  v.   Roehr    (Fed.   Cas.   No. 

17189   A),   351,   356,   746. 
V.  Searle  &  Hereth  Co.   (191  U. 

S.   195),   315,   365,  469. 
Warren    v.     Warren     Thread     Co. 

(134   Mass.   247),   25,   322. 
Washburne     v.     Dosch     (68     Wis. 

436),  198. 
V.  National  Wall  Paper  Co.   (81 

Fed.  Rep.  17),  187,  192. 
Washburn    &    Moen    Mfg.    Co.    v. 

Freeman   Wire    Co.    (41    Fed. 

Rep.   410),   78,  396. 
V.  Haish  (Fed.  Case  No.  17217), 

78. 
Washington  Medallion  Pen  Co.  v. 

Esterbrook     (Fed.     Case    No. 

17246  a),    244. 

Waterman  v.  Shipman  (130  N. 
Y.   301),   83,   101. 

Watkins  v.  Landon  (52  Minn. 
389),    180,    219,    607. 

Watt  V.  O'Hanlon   (4  P.  R.  1),  93. 

Waukesha  Hygeia  Min.  Springs 
Co.  V.  Hygeia  Sparkling  Dis- 
tilled Water  Co.  (11  C.  C.  A. 
277),   52,    100,   449,   462. 

Weber  Medical  Tea  Co.  v.  Kirch- 
stein  (101  Fed.  Rep.  580), 
277. 

V.   Weber    (102   Fed.   Rep.    158), 
388. 

Webster  v.  Ketcham  (39  N.  Y. 
Sup.   Ct    54),   334. 


Ixiv 


TABLE   OF  CASES. 


Web-Wil 


References  are  to  pages. 


Webster    v.    Webster    (3    Swanst. 

490),   23,  361. 
V.  Williams   (62  Ark.  101),  191. 
Wedderburn    v.    Wedderburn     (22 

Beavan,  84),  187. 
Weed    V.    Peterson    (12    Abb.    Pr. 

N.   S.   178).   24,   197,   402,   404. 
Weener    v.    Brayton     (152    Mass. 

101),   3,   56,   361,   402. 
Weinstock,  Lubin  &  Co.  v.  Marks 

(109   Cal.  529),  286,  303. 
Welch  V.  Knott    (4  K.  &  J.  747), 

274,  294. 
Weldon  v.  Dick   (L.  R.  10  Ch.  D. 

247),  172. 
Wellman    &    Dwire    Tob.    Co.    v. 

Ware    Tob.    Works    (46    Fed. 

Rep.   289),   95,   249. 
Wells  V.  Ceylon  Perfume  Co.  (105 

Fed.    Rep.    621),    292. 
Wells    &    Richardson     v.     Siegel- 

Cooper    Co.     (106    Fed.    Rep. 

77),    98. 
Welsbach     Light     Co.    v.    Adam 

(107  Fed.   Rep.  463),  58,  289, 

305,    459. 
Welz  V.  Rhodius   (87  Ind.  1),199. 
Weston  V.   Hemmons    (2  Vict.   L. 

R.  Eq.  121),  222. 
V.     Ketcham     (1),     (39     N.     Y. 

Super.  Ct.  54),  21,  24. 
V.   Ketcham    (2),    (51   How.   Pr. 

455),   21,   30. 
Wetmore  v.   Scovell    (3   Edw.   Ch. 

515),  226. 
Weyman   v.    Soderberg    (108   Fed. 

Rep.   63),  89,   129,   272. 
Wharton   v.   Thurber    (Cox,   Man- 
ual,  663),   403. 
Wheeler  v.  Johnston    (3  L.  R.  Ir. 

284),   55,   79. 
White  V.  Jones   (1  Abb.  Pr.  N.  S. 

337),    197. 
V.    Wagar     (1),     (83     111.    App. 

592),   344,   558. 


White    V.    Wagar     (2),     (185    111. 

195),    344,    558. 
Whitfield  V.  Loveless   (64  Off.  Gaz. 

442),  311. 
Whiting  Mfg.  Co.  v.  Jos.  H.  Bau- 
land     Co.     (56     N.    Y.     Supp. 
114),    380. 
Whitman     v.     Hubbell     (30     Fed. 

Rep.   81),  329. 
Whitney  v.  Robertson   (124  U.  S. 

190),   449. 
Whittaker    v.    Howe     (3    Beavan, 

383),    19L 
Whittier    v.    Dietz    (66    Cal.    78), 

17,   59,   332. 
Wilcox  &  Gibbs  S.  M.  Co.  v.  Mar- 
ble   (1    Mackey,    284),    426. 
V.  The  Gibbens  Frame    (17  Fed. 
Rep.    623),    78,    243,   419. 
Wilkinson  v.  Griffith    (8  R.  P.  C. 

370),   267,   280. 
Williams    v.    Adams     (Fed.    Case 
No.    17711),    105,    394. 
V.  Brooks    (50   Conn.  278),  375, 

392. 
V.  Farrand   (88  Mich.  473),  187, 

198.   210. 
V.   Fears    (179   U.   S.    L70),   316. 
V.  Johnson   (2  Bos.  1),  105,  145, 

246,    375. 
V.    Mitchell    (45    C.    C.   A.    265), 

97,   387. 
V.    Osborne      (13     L.    T.    N.    S. 

498),  375. 
V.    Spence    (25    How.    Pr.    366), 

105. 
V.   Williams    (3    Mer.   157),    220. 
V.    Wilson    (4    Sandf.    Ch.    379), 
195. 
Williams  Mfg.  Co.  v.  Noera    (158 

Mass.  110),  121. 
Wilmer  v.  Thomas   (74  Md.  485), 

25,    322. 
Wilson    V.    Singer    Mfg.    Co.     (12 
Fed.  Rep.  57),  75. 


Win-Zan 


TABLE   OF  CASES. 


Ixv 


References 

Winchester    Repeating    Arms    Co. 

V.    Butler     Bros.      (128     Fed. 

Rep.   976),  330. 
Winn    V.    Gilmer     (27    Fed.    Rep. 

817),    450. 
Winsor   v.   Clyde    (9   Phila.   513), 

337. 
Wirtz   V.    Eagle   Bottling   Co.    (50 

N.  J.  Eq.   164),   258,  267. 
Witt    V.    Reed    Electric    Co.    (187 

Pa.  424).  229. 
Witthaus  V.  Braun   (44  Md.  303), 

20,   22,   23,   193. 
Wm.    J.    Moxley   Co.   v.    Braun    & 

FittsCo.  (93  111.  App.  183),   14. 
Wm.    G.    Rogers    Co.    v.    Interna- 
tional   Silver    Co.     (55    C.    C. 

A.    83),   146. 

Wm.    Rogers    Mfg.   Co.   v.   Rogers 

&   S.   Mfg.   Co.    (11   Fed.   Rep. 

495),    57,    128,    143,    144,    146, 

148,    151. 
V.   R.    W.    Rogers    Co.    (66    Fed. 

Rep.   66),   143,   144. 
V.   R.  W.  Rogers  Co.    (17   C.  C. 

A.  57),  143. 
V.    Rogers    (84    Fed.    Rep.    639), 

143,   146. 
V.  Simpson   (54  Conn.  527),  143. 
Wolfe    V.    Alsop    (12    Vict.    L.    R. 

(E.),    421),   94,   354. 

V.    Barnett    (24    La.    Ann.    97), 

179,   375. 
V.    Burke    (56    N.    Y.    115),    70, 

143. 
V.    Goulard    (18    How.    Pr.    64), 

94,   128. 
V.    Hart    (4   V.   L.   R.   Eq.    125), 

94. 
V.  Lang    (13  V.  L.  R.   752),  94, 

354. 

Wood  V.  Burgess    (L.  R.  24  Q.  B. 
D.   162),   346. 


are  to  pages. 

Wood  V.  Butler  (3  R.  P.  C.  81),  70. 
V.     Hinchman     (110     Off.     Gaz. 

600),   293. 
V.    Lambert    (L.    R.    32    Ch.    D. 

247),    7,    56,    182. 
V.  Sands    (Seb.  467),  148. 
Woodcock  V.  Guy   (33  Wash.  234), 

60,  717. 
Woodman    v.    United    States     (15 

Ct.    of  CI.    541),   411. 
Woods    V.    Sands    (Fed.    Case   No. 

17963),    311. 
Woodward  v.  Lazar  (21  Cal.  449), 

311. 
Woolf   V.  Woolf    (43   Sol.  J.    127), 

402. 
Woolsey    v.    Judd    (4    Duer    379), 

225. 
Wooster   v.    Kisch    (26    Hun,    61), 

213. 
Worden   &   Co.    v.    California   Fig 

Syrup  Co.    (187  U.  S.  515),  88. 
Wormser  v.  Shayne   (111  111.  App. 

556),    377. 
Wotherspoon   v.    Currie    (L.    R.    5 

H.   L.   508),   35,   100,   140,   256, 

257. 
V.  Gray   (Ct.  Sess.  Cas.,  3d  ser., 

2),  95. 
Wright   V.   Simpson    (15   Off.   Gaz. 

9G8),   27,    28,   412,   423. 


Yale  Cigar  Mfg.  Co.  v.  Yale  (30 
Off.  Gaz.  1183),  56,  100,  412, 
421,    423,    457,    458. 

Young  V.  Jones  (Fed.  Case  No. 
18159),   24,   26,   52. 

V.   Macrae    (9   Jur.   N.    S.   322), 
79,    93. 


Zanturjian  v.  Boornazian   (55  Atl. 
Rep.    199),   206. 


HOPKINS  ON  TRADEMARKS 


CHAPTER  I. 

PREFATORY. 

§  1.  The  need  of  legal  restraint  of  unfair  trade.— It  is 
not  the  spirit  of  our  laws  to  interfere  with  fair  competi- 
tion. It  is  for  the  best  interests  of  society  that  prices 
should  be  adjusted  by  the  economical  laws  of  supply  and 
demand.  With  limitations  that  have  been  imposed  by 
varying  local  conditions,  tempered  by  the  caprices  of 
legislation  and  the  idiosyncrasies  of  judges,  our  common 
and  statutory  law  alike  condemn  contracts  in  restraint 
of  trade,  and  monopolies,  complete  or  partial.  But,  on 
the  other  hand,  there  are  recognized  property  rights 
which  are  of  necessity  monopolistic  in  their  character. 
The  most  notable  are  those  created  by  the  patent  and 
copyright  laws,  which  grant,  for  a  limited  time,  a  monop- 
oly in  the  production  of  the  brain  of  the  author  or  inven- 
tor. The  value  of  these  laws  in  the  advancement  of 
science,  manufacture  and  art  is  universally  recognized. 
Closely  allied  to  these  rights  is  the  right  of  those  engaged 
in  commerce  to  be  subjected  to  none  but  fair  competition. 

Unfair  competition  consists  in  passing  off  one's  goods 
as  the  goods  of  another,  or  in  otherwise  securing  patron- 
age that  should  go  to  another,  by  false  representations 
that  lead  the  patron  to  believe  that  he  is  patronizing  the 
other  person.  It  is  of  vital  importance  to  healthy  busi- 
ness conditions  that  such  competition  should  be  sup- 
pressed. It  is  equally  important  however,  that  fair  com- 
petition shall  not  be  interfered  with.  Whether  the  com- 
1  1 


2  HOPKINS   ON   TRADEMARKS.  [§  1 

petitive  acts  complained  of  are  fair  or  unfair  is  the  vital 
point  in  each  litigated  case. 

It  is  apparent  that  the  simplest  means  of  depriving 
another  of  the  trade  he  has  built  up  is  to  copy  the  marks 
he  places  on  his  merchandise.  This  is  the  easiest  method 
of  stealing  his  trade,  and  most  universal  because  of  the 
general  use  of  marks  or  brands  upon  personal  property. 
The  use  of  such  marks  runs  far  back  into  the  shadows  of 
history,  and  to  the  period  when  a  knowledge  of  written 
language  was  unusual  among  tradesmen.  It  is  only  nat- 
ural that  these  marks  used  in  trade,  ot  trademarks,  should 
have  first  become  the  subjects  of  judicial  consideration, 
and  that  the  law  concerning  them  should  have  reached  a 
state  of  comparatively  complete  development  before 
infringers  began  to  employ  other  and  more  obscure  means 
to  divert  trade. 

It  is  true,  as  well,  that  the  development  of  the  law  of 
the  technical  trademark  tended  to  encourage  the  bucca- 
neers of  commerce  to  invent  new  and  subtler  means  of 
stealing  another's  trade  without  trespassing  upon  his 
trademark  rights.  But  the  law,  steadily  though  slowly, 
extended  its  bulwark  of  protection  about  the  legitimate 
trader,  until  at  length  he  was  afforded  legal  redress 
in  some  form,  not  always  adequate  or  complete,  against 
the  fraudulent  diversion  of  his  trade,  in  whatever  form 
it  might  appear. 

In  the  light  of  these  facts  it  is  self  evident  that  the  law 
of  the  technical  trademark  must  first  be  mastered  before 
the  student  can  with  understanding  study  the  gradual 
evolution,  from  this  protoplasm,  of  the  larger  law  regu- 
lating all  unfair  competition  in  trade. 

From  the  early  days  of  commerce,  probably  from  its 
beginning,  the  keen  rivalry  of  competing  merchants  has 
led  to  the  use  of  unfair  and  dishonest  methods  of  divert- 
ing custom.  With  the  growth  of  commerce  has  come  a 
corresponding  increase  of  fraudulent  competition  and  its 
attendant  evils.    The  English-speaking  people  were  slow 


§2] 


PREFATORY. 


to  realize  tliat  some  legal  restraint  should  be  imposed 
upou  the  dealer  who  seeks  to  secure  patrouage  by  dress- 
ing his  goods  in  a  manner  calculated  to  deceive  the  pub- 
lic into  a  belief  that  they  are  the  goods  of  another.  There 
are  a  few  unimportant  unfair  trade  cases  in  the  English 
reports  of  the  eighteenth  century;  the  first  reported 
American  decision  was  rendered  in  1825.^  The  law  as  it 
is  administered  by  the  courts  of  the  United  States  to-day 
is  almost  wholly  the  product  of  the  last  half-centur>'. 

The  purpose  of  this  treatise  is  to  discuss  the  law  of 
unfair  trade  in  its  broadest  sense,  including  not  only  the 
law  of  trademarks,  but  also  the  principles  applicable 
to  the  restraint  of  fraudulent  competition  in  cases  where 
no  trademark  is  involved.  ''The  law  of  trademarks  is 
but  part  of  the  law  of  unfair  competition  in  trade."  ^ 

§  2.     Trademark  defined.^— A  trademark  is  a  distinc- 


1 — Snowden  v.  Noah,  Hopkins' 
Ch.  347. 

2 — Bradford,  J.,  in  Dennison 
Mfg.  Co.  V.  Thomas  Mfg.  Co.,  94 
Fed.   Rep     651,   659. 

3 — Judicial  definitions.  —  "A 
trademark  may  consist  of  a  name, 
symbol,  letter,  form  or  device,  if 
adopted  and  used  by  a  manufac- 
turer or  merchant  in  order  to  des- 
ignate the  goods  he  manufactures 
or  sells,  to  distinguish  the  same 
from  those  manufactured  or  sold 
by  another,  to  the  end  that  the 
goods  may  be  known  in  the  mar- 
ket as  his,  and  to  enable  him  to 
secure  such  profits  as  result  from 
his  reputation  for  skill,  industry, 
and  fidelity."  Mr.  Justice  Clifford 
in  McLean  v.  Fleming,  96  U.  S. 
245,  254,  and  in  Amoskeag  Mfg.  Co. 
V.  Trainer,  101  U.  S.  51,  60. 

"A  trademark,  properly  so 
called,  may  be  described  as  a  par- 
ticular mark  or  symbol,  used  by  a 
person  for  the  purpose  of  denoting 


that  the  article  to  which  it  is 
affixed  is  sold  or  manufactured 
by  him  or  by  his  authority,  or 
that  he  carries  on  business  at  a 
particular  place."  Lord  Cranworth 
in  Leather  Cloth  Co.  v.  American 
Leather  Cloth  Co.,  35  L.  J.  Ch.  61. 

"A  trademark  is  a  mere  notice, 
an  arbitrary  mark  or  sign  put  on 
an  artificial  product,  whereby  any 
person  interested  in  the  informa- 
tion may  be  assured  as  to  the  ori- 
gin of  said  product."  Showalter, 
J.,  in  Royal  Baking  Powder  Co. 
V.  Raymond,  70  Fed.  Rep.  376,  380. 

"A  trademark  is  a  peculiar 
name  or  device,  by  which  a  per- 
son dealing  in  an  article  desig- 
nates it  as  of  a  peculiar  kind, 
character  or  quality,  or  as  manu- 
factured by  or  for  him,  or  dealt 
in  by  him,  and  of  which  he  is  en- 
titled to  the  exclusive  use."  Dev- 
eos,  J.,  in  Weener  v.  Brayton,  152 
Mass.  101,  102. 

"It   is   a   mode    of    designating 


HOPKINS   ON   TR.VDEMARKS. 


[§2 


goods  as  being  the  goods  which 
have  been,  in  some  way  or  other, 
dealt  with  by  A.  B.,  the  person 
who  owns  the  trademark."  Kay, 
J.,  in  Re  The  Australian  Wine 
Importers,  (Ltd.),  L.  R-  41  Ch.  D. 
278,  281. 

"Symbols  or  devices  used  by  a 
manufacturer  or  merchant  to  dis- 
tinguish the  products,  manufac- 
tures, or  merchandise  which  he 
produces,  manufactures  or  sells, 
from  that  of  others,  are  called  and 
known  by  the  name  of  trade- 
marks. They  are  used  in  order 
that  such  products,  manufactures 
or  merchandise  may  be  known  as 
belonging  to  the  owner  of  the 
symbol  or  device,  and  that  he  may 
secure  the  profits  from  its  repu- 
tation or  superiority."  Mr.  Jus- 
tice Clifford  in  Amoskeag  Mfg.  Co. 
V.  Trainer,  101  U.  S.  51,  56. 

"Any  name,  symbol,  letter,  fig- 
ure or  device  adopted  by  the  per- 
sons manufacturing  or  selling 
goods,  and  used  and  put  upon 
such  goods  to  distinguish  them 
from  those  manufactured  or  sold 
by  others,  and  employed  so  often 
and  for  such  a  length  of  time,  as 
to  raise  the  presumption  that  the 
public  would  know  that  it  was 
used  to  indicate  ownership  of  the 
goods  in  the  person  manufactur- 
ing or  selling  them,  constitutes 
his  trademark."  Rhodes,  J.,  in 
Derringer  v.  Plate,  29  Cal.  292; 
Cox,  324. 

"A  trademark  is  a  symbol  arbi- 
trarily selected  by  a  manufacturer 
or  dealer,  and  attached  to  his 
wares  to  indicate  that  they  are  his 
wares."  Douglas,  J.,  in  Cady  v. 
Schultz,  19  R.  I.  193;  61  Am.  St 
Rep.   763,  765. 

"It  is  a  sign  or  mark  by  which 
the     manufactured     articles     pro- 


duced by  one  person,  or  firm,  or 
maker  are  distinguishable  from 
those  produced  by  rival  manufac- 
turers." Williams,  J.,  in  Hoyt  v. 
Hoyt,  143  Pa.  St.  623;  24  Am.' St. 
Rep.  575. 

"A  trademark  consists  of  a 
word,  mark  or  device  adopted  by 
a  manufacturer  or  vendor  to  dis- 
tinguish his  productions  from 
other  productions  of  the  same  ar- 
ticle." Gilfillan,  C.  J.,  in  Cigar- 
makers'  Protective  Union  v.  Con 
haim,  40  Minn.  243;  12  Am.  St. 
Rep.  726. 

"A  trademark  is  a  name,  sign, 
symbol,  mark,  brand,  or  device  of 
any  kind,  used  to  designate  the 
goods  manufactured  or  sold,  or 
the  place  of  business  of  the  man- 
ufacturer or  dealer  in  such  goods." 
Beck,  J.,  in  Shaver  v.  Shaver,  54 
Iowa,  208;    Price  &  Steuart,  395. 

"A  trademark  may  consist  of 
anything,  marks,  forms,  symbols, 
which  designate  the  true  origin  or 
ownership  of  the  article."  Monell, 
J.,  in  Godillot  v.  Hazard,  44  N.  Y. 
Sup.  Ct.  427. 

"A  trademark  is  .  .  .  the 
name,  symbol,  figure,  letter,  form, 
or  device  used  by  a  manufacturer 
or  merchant  to  designate  the 
goods  he  manufactures  or  sells,  to 
distinguish  them  from  those  man- 
ufactured or  sold  by  another,  to 
the  end  that  they  may  be  known 
in  the  market  as  his,  and  to  se- 
cure such  profits  as  result  from  a 
reputation  for  superior  skill,  in- 
dustry or  enterprise."  Crawford, 
J.,  in  Larrabee  v.  Lewis,  67  Ga. 
562. 

"A  trademark  is  an  arbitrary 
character  or  characters  without 
special  meaning,  adopted  by  per- 
sons, firms  or  corporations  for  the 
purpose   of   identifying   the   goods 


§2] 


PREFATORY, 


manufactured  by  them  or  of  which 
they  have  the  sale."  Marble, 
Commissioner,  in  Ex  parte  Frie- 
berg  &  Workum,  20  Off.  Gaz.  1164. 
"Broadly  defined,  a  trademark 
is  a  mark  by  which  the  wares  of 
the  owner  are  known  in  trade.  Its 
object  is  two-fold:  First,  to  pro- 
tect the  party  using  it  from  com- 
petition with  inferior  articles; 
and  second,  to  protect  the  public 
from  imposition.  .  .  .  Anything 
which  can  serve  to  distinguish  one 
man's  productions  from  those  of 
another  may  be  used.  The  trade- 
mark brands  the  goods  as  genuine, 
just  as  the  signature  to  a  letter 
stamps  it  as  authentic."  Coxe,  J., 
in  Shaw  Stocking  Co.  v.  Mack,  12 
Fed.  Rep.  707,  710. 

"A  trademark  is  any  proper 
mark  by  which  goods  and  wares 
of  the  owner  or  manufacturer  are 
known  in  the  trade.  Courts  of 
equity  have  two  objects  in  view  in 
granting  injunctions  against  their 
imitation:  1.  To  secure  to  the  in- 
dividual adopting  one  the  profits 
of  his  skill,  industry,  and  enter- 
prise; 2.  To  protect  the  public 
against  fraud."  Nixon,  J.,  in 
Humphreys'  Specific  Med.  Co.  v 
Wenz,  14  Fed.  Rep.  250,  252. 

"A  trademark  is  a  sign  or  sym- 
bol primarily  confined  exclusively 
to  the  indication  of  the  origin  or 
ownership  of  the  goods  to  which 
it  may  be  attached  and  it  may  be 
composed  of  any  name,  device, 
line,  figure,  mark,  word,  letter, 
numeral  or  combination  or  ar- 
rangement of  any  or  all  of  these, 
which  will  serve  the  sole  purpose 
of  a  trademark,  and  which  no 
other  person  can  adopt  or  use  with 
equal  truth."  Hargis,  J.,  in  Avery 
V.  Meikle,  81  Ky.  73. 

"A     trademark     consists    of     a 


word,  mark,  or  device  adopted  by 
a  manufacturer  or  vendor  to  dis- 
tinguish his  production  from 
other  productions  of  the  same  ar- 
ticle." Wallace,  J.,  in  Hostetter  v. 
Fries,  17  Fed.  Rep.  620,  622. 

"A  trademark,  as  defined  by 
Bouvier,  is  a  sign,  writing  or 
ticket  put  on  manufactured  goods, 
to  distinguish  them  from  others. 
It  has,  by  a  commentator  on  trade- 
marks, been  more  fully  explained 
as  a  name,  symbol,  figure,  letter, 
form,  or  device,  adopted  and  used 
by  a  manufacturer  or  merchant  to 
designate  the  goods  he  manufac- 
tures or  sells  to  distinguish  them 
from  the  goods  of  another."  Alli- 
son, P.  J.,  in  Ferguson  v.  Davol 
Mills,  2  Brewst.  314. 

"A  trademark  is  some  arbitrary 
or  representative  device  attached 
to  or  sold  with  merchandise  and 
serving  to  designate  the  origin  or 
manufacture  of  that  merchan- 
dise." Carpenter,  J.,  in  Davis  v. 
Davis,  27  Fed.  Rep.  490,  491. 

"What  is  a  trademark?  A 
'mark'  means  to  make  a  visible 
sign  upon  something;  to  affix  a 
significant  mark  to;  to  draw,  cut. 
fasten,  brand;  a  token  upon,  in- 
dicating or  intimating  something; 
to  affix  an  indication  to;  to  at- 
tach one's  name  or  initials  to.  A 
trade-mark,  therefore,  consists  of 
the  use  in  trade  of  such  a  mark, 
placed  upon  goods  manufactured 
by  a  particular  person  and  placed 
in  market  with  such  marks,  for 
sale  and  trade."  Welker,  J.,  in 
Adams  v.  Heisel,  31  Fed.  Rep. 
279,    280. 

"A  trademark  is  properly  de- 
fined by  Upton  (Upton's  Trade- 
marks, 9)  as  'the  name,  symbol, 
figure,  letter,  form  or  device 
adopted   and   used   by  a  manufac- 


HOPKINS   ON   TRADEMARKS. 


[§2 


turer  or  merchant,  in  order  to  des- 
ignate the  goods  that  he  manufac- 
tures or  sells,  and  distinguish 
them  from  those  manufactured 
or  sold  by  another,  to  the  end  that 
they  may  be  known  in  the  market 
as  his,  and  thus  enable  him  to  se- 
cure such  profits  as  result  from  a 
reputation  for  superior  skill,  in- 
dustry or  enterprise.'  The  trade- 
mark must  be  used  to  indicate  not 
the  quality,  but  the  origin  or  own- 
ership of  the  article  to  which  it 
is  attached.  It  may  be  any  sign, 
mark,  symbol,  word  or  words, 
which  others  have  not  an  equal 
right  to  employ  for  the  same  pur- 
pose." Earl,  Commissioner  of  Ap- 
peals, in  Newman  v.  Alvord,  51  N, 
Y.  189,  193. 

"Every  one  is  at  liberty  to  affix 
to  a  product  of  his  own  manufac- 
ture any  symbol  or  device,  not 
previously  appropriated,  which 
will  distinguish  it  from  articles 
of  the  same  general  nature  manu- 
factured or  sold  by  others,  and 
thus  secure  to  himself  the  benefits 
of  increased  sale  by  reason  of  any 
peculiar  excellence  he  may  have 
given  to  it.  The  symbol  or  device 
thus  becomes  a  sign  to  the  public 
of  the  origin  of  the  goods  to  which 
it  is  attached,  and  an  assurance 
that  they  are  the  genuine  article 
of  the  original  producer.  In  this 
way  it  often  proves  to  be  of  great 
value  to  the  manufacturer  in  pre- 
venting the  substitution  and  salo 
of  an  inferior  and  different  article 
for  his  products.  It  becomes  his 
trademark,  and  the  courts  will 
protect  him  in  its  exclusive  use." 
Mr.  Justice  Field  in  Amoskeag 
Mfg.  Co.  V.  Trainer,  101  U.  S.  51, 
53. 

"Trademark.  —  An  arbitrary 
symbol  affixed  by  a  manufacturer 


or  merchant  to  a  vendible  com- 
modity. The  principal  purpose  of 
a  trademark  is  to  guarantee  the 
genuineness  of  a  product.  It  is,  in 
fact,  the  commercial  substitute  for 
one's  autograph.  In  all  ages  it  has 
been  used  to  denote  origin,  and 
thus  protect  the  purchaser  as  well 
as  the  vendor.  All  countries  pro- 
tect the  integrity  of  trade-marks, 
and  nearly  all  civilized  nations 
have  treaties  or  conventions  se- 
curing reciprocity  of  protection. 
The  tests  of  a  trademark  are:  1. 
Universality;  that  is,  commonly 
recognized  as  such.  2.  Exclusive- 
ness;  in  the  possession  of  the 
owner.  3.  Individuality;  must  in- 
dicate origin  and  ownership.  4. 
Must  be  for  merchandise.  5.  Must 
be  in  a  lawful  business.  6.  Must 
be  distinct  and  invariable." 
Knight's  Mechanical  Dictionary, 
title  "Trademark,"  p.  2609. 

"Our  word  'trademark'  compre- 
hends both  the  marque  de  fabrique 
and  marque  de  commerce  of 
France."  Townsend,  J.,  in  La  Re- 
publique  Francaise  v.  Schultz,  57 
Fed.  Rep.  37,  41. 

"A  distinctive  mark  of  authen- 
ticity, through  which  the  products 
of  particular  manufacturers  or  the 
vendible  commodities  of  particu- 
lar merchants  may  be  distin- 
guished from  those  of  others." 
Mr.  Chief  Justice  Fuller  in  Elgin 
Nat.  Watch  Co.  v.  Illinois  Watch 
Case  Co.  (2),  179  U.  S.  665,  673. 

"A  trademark — is  a  name  or  a 
mark  or  a  device  which  it  at- 
tached to  the  article  to  point  out 
Its  origin."  Shipman,  J.,  in  Adee 
V.  Peck  Bros.  &  Co.,  39  Fed.  Rep. 
209,    210. 

"A  trademark  is  a  word,  a  sym- 
bol or  device  by  which  the  wares 
of  the  owner  are  known  in  trade." 


§3] 


PREFATORY. 


tive*  name,  word,  mark,  emblem,  design,  symbol  or  device, 
used  in  lawful  coinmerce  to  indicate  or  authenticate  the 
source  from  which  has  come,  or  through  which  has  passed, 
the  chattel  upon  or  to  which  it  is  applied  or  affixed.^ 

§3.    Tradename  defined.— The  word  ''tradename"  as 
used  in  the  decisions  has  two  dilterent  meanings.    Stand- 


Coxe,  J.,  in  Kipling  v.  G.  P.  Put- 
nam's Sons,  120  Fed.  Rep.  631.  57 
C.  C.  A.  295. 

"A  trademark  is  an  arbitrary, 
distinctive  name,  symbol,  or  de- 
vice, to  indicate  or  authenticate 
the  origin  of  the  product  to  which 
it  is  attached."  Deemer,  C.  J.,  in 
Sartor  v.  Schaden,  Iowa,  101  N.  W. 
Rep.  511. 

"A  trademark  is  a  notice,  a  me- 
dium of  information  touching  ori- 
gin or  ownership."  Showalter,  J., 
in  Beadleston  &  Woerz  v.  Cooke 
Brewing  Co.,  20  C.  C.  A.  405,  74 
Fed.  Rep.   229,  234. 

"A  trademark  is  a  means  of  au- 
thenticating or  indicating  the  ori- 
gin of  an  article."  Billings,  J.,  in 
Johnson  v.  Schenck,  Fed.  Case 
No.  7,412. 

4 — By  the  word  "distinctive,"  as 
used  in  our  definition,  is  meant 
that  the  mark  must  be  something 
which  "shall  be  capable  of  distin- 
guishing the  particular  goods  in 
relation  to  which  it  is  to  be  used 
from  other  goods  of  a  like  charac- 
ter belonging  to  other  people." 
Lord  Chief  Justice  Russell,  in 
Rowland  v.  Mitchell,  L.  R.  (1897) 
1  Ch.  D.  71,  74.  Wood  v.  Lambert. 
L.  R.  32  Ch.  D.  247;  54  L.  T.  N.  S. 
314;  3  P.  R.  81;  (Court  of  Ap- 
peals) L.  R.  32  Ch.  D.  257;  55  L. 
J.  Ch.  277;  54  L.  T.  N.  S.  317;  3 
P.  R.  88;  Re  Perry  Davis  &  Son, 
58  L.  T.  N.  S.  695;    5  P.  R.  333,  and 


many  similar  English  cases  treat 
of  the  word  "distinctive"  as  used 
in  the  English  Patents,  Designs 
and  Trademarks  Act  of  1883,  sec- 
tion 64,  sub-section  1,  c.  But  the 
word  is  used  with  the  same  sig- 
nificance by  our  own  leading  ju- 
rists, as  for  example,  by  Mr.  Chief 
Justice  Fuller,  in  Elgin  National 
Watch  Co.  V.  Illinois  Watch  Case 
Co.  (2),  179  U.  S.  665,  673;  by  Jus- 
tice Holmes,  in  North-Eastern  Awl 
Co.  V.  Marlborough  Awl  Co.,  168 
Mass.  147;  60  Am.  St.  Rep.  373; 
and  by  Judge  Lacombe  in  National 
Biscuit  Co.  V.  Baker,  95  Fed.  Rep. 
136.  For  this  reason  the  word  is 
incorporated  in  the  definition 
given  in  the  text. 

5 — The  mode  in  which  the  mark 
is  applied  or  affixed  is  immaterial. 
It  may  be  water-marked  in  trans- 
lucent fabrics.  Price  v.  GoQdall, 
L.  R.  (1891)  1  Ch.  D.  35.  It  has 
been  held  to  be  a  sufficient  method 
of  affixing  the  mark,  to  use  it  in 
advertising,  and  to  place  a  litho- 
graphed fac-simile  of  it  on  a  card, 
in  a  box  containing  a  quantity  of 
the  goods.  Hay  &  Todd  Mfg.  Co. 
v.  Querns  Brothers,  86  Off.  Gaz. 
1323.  It  has  been  held  that  to  dis- 
play the  mark  on  a  show-card 
placed  on  lots  of  candy  in  a  show 
window,  is  not  sufficient  to  estab- 
lish a  trademark  right  therein. 
Oakes  v.  St.  Louis  Candy  Co.,  146 
Mo.  391,  48  S.  V,\  Rep.  467. 


8  HOPKINS  ON  TRADEMARKS.  [§  3 

ing  alone,  and  separate  from  the  word  ''trademark"  it 
includes  all  business  names;  while  in  the  expression 
"trademarks  and  tradenames"  it  means  all  business 
names  which  are  not  technical  trademarks.** 

Mr.  Browne,  in  his  valuable  treatise  on  trademarks 
(sec.  91)  uses  the  following  language;  ''the  distinction 
will  be  readily  comprehended,  when  it  is  remembered 
that  a  trademark  owes  its  existence  to  the  fact  that  it  is 
actually  affixed  to  a  vendible  commodity.  A  tradename 
is  more  properly  allied  to  the  goodvrill  of  a  business." 
This  distinction  is  of  itself  decidedly  misleading.  Many 
tradenames  are  "actually  affixed  to  a  vendible  com- 
modity, ' ' '  and  as  both  trademarks  and  other  tradenames 
are  a  constituent  part  of  the  goodwill  of  the  business  in 
which  they  are  used,  it  is  not  possible  for  one  class  of 
names  to  be  more  properly  allied  to  the  goodwill  than  the 
other,  nor  is  it  proper  to  say  of  either  that  it  is  "allied" 
to  something  of  which  it  is  a  component  part. 

A  name  is  frequently  referred  to  as  a  "trademark" 
and  as  a  "tradename"  in  the  same  opinion.^  Some  of 
our  ablest  judges  treat  the  words  "tradename"  and 
"trademark"  as  synonymous.^ 

Some  of  the  cases  dealing  with  tradenames  are  fairly 
bewildering  to  one  who  endeavors  to  reconcile  them  or 
deduce  a  general  definition  of  "tradename"  from  them. 
In  a  Massachusetts  case,  for  example,  the  court  found 
that  the  defendant  had  acquired  the  right  to  the  use  of 
the  name  "John  G.  Loring  &  Co."  as  a  "trademark"  on 
goods,  but  had  no  right  to  use  it  as  a  tradename.^ ^^ 

6— N.  K.  Fairbank  Co.  v.  Luckel,    Mass.,  85,  53  N.  E.  Rep.  141. 
King  &  Cake   Soap   Co.,   102   Fed.        8 — Opinion    of    Seaman,   J.,    in 
Rep.  327,  331,  42  C.  C.  A.  376,  92    Postum   Cereal   Co.    v.    American 
Off.  Gaz.  1437.  Health  Food  Co.,    109    Fed.    Rep. 

7 — As    "Minnesota    Patent,"    in    898. 
Pillsbury-Washburn   Co.   v.   Eagle,        9— Thomas  G.  Plant  Co.  v.  May 
86    Fed.    Rep.    608,    30    C.    C.    A.     Co.,  44  C.  C.  A.  534.  105  Fed.  Rep. 
386;     and    "Waltham,"    in    Amer-     375. 

lean      Waltham     Watch      Co.      v.        10— Bowman  v.  Floyd,  85  Mass. 
United     States     Watch     Co.,     173    76. 


§  3]  PREFATORY.  9 

As  a  proper  name  cannot  be  a  trademark,  under  prin- 
ciples discussed  elsewhere  in  this  book,  while  the  mean- 
ing of  the  word  as  used  by  the  court  is  clear,  the  opinion 
lends  no  assistance  to  the  distinction  between  "trade- 
mark" and  "tradename." 

Plistorically,  this  confusion  probably  arose  in  the  Eng- 
lish decisions.  In  one  of  the  leading  cases  we  find  that 
Lord  Chancellor  Westbury  said  "a  name  or  the  style  of 
a  firm  may  by  long  usage  become  a  mere  trademark, "^^ 
and  in  the  same  case,  in  the  House  of  Lords,  Lord  Cran- 
worth  referred  to  the  difficulties  which  ' '  may  arise  where 
the  trademark  consists  merely  of  the  name  of  the  manu- 
facturer."^^ 

Lord  Romilly  said  in  another  case  "the  name  or  style 
of  the  firm  of  '  Banks  &  Co. '  was  an  asset  of  the  partner- 
ship, and  if  the  whole  concern  and  the  good  will  of  a 
business  have  been  sold,  the  name,  as  a  trademark,  would 
have  been  sold  with  it."^^ 

With  this  loose  use  of  the  word  trademark  by  such 
eminent  judges  some  forty  years  since,  it  is  not  remark- 
able that  the  bench  and  the  profession  have  not  yet  drawn 
the  line  separating  trademarks  from  tradenames  with  any 
degree  of  lucidity.  The  question  of  mere  definition  is 
nearly  always  a  matter  of  secondary  importance  in  the 
progress  of  any  science.  The  want  of  an  accurate  dis- 
tinction between  trademarks  and  tradenames  has  not 
hampered  the  growth  of  this  branch  of  the  law;  if  it  had, 
the  distinction  would  long  since  have  been  drawn  by  the 
courts.  The  principles  involved  in  trademark  cases  and 
tradename  cases  have  been  substantially  identical.  But 
with  their  development  it  has  been  necessary'  to  sharply 
define  the  technical  trademark,  and  if  it  were  possible  to 
draft  as  accurate  a  definition  of  tradename  the  result 

11— Leather  Cloth  Co.  v.  Ameri-  can  Leather  Cloth  Co.,  11  H.  L.  C. 

can  Leather  Co.,  4  Deg.  J.  &  S.  141,  523,  .533. 

144.  13 — Banks  v.  Gibson,    34    Beav. 

12— Leather  Cloth  Co.  v.  Ameri-  566. 


10  HOPKINS   ON    TRADEMARKS.  [§  3 

would  be  to  measure  the  metes  and  bounds  of  the  field  of 
eases  in  which  relief  will  be  granted  against  the  fraudu- 
lent use  of  a  word  or  phrase  used  as  the  distinguishing 
identification  mark  of  a  commercial  enterprise  or  article 
of  trade. 

It  is  clear  that  words  of  common  right  ought  not  to  be 
called  tradenames.  Thus,  the  word  '' cracker"  imprint- 
ed on  a  soda  cracker  indicates  merely  that  it  is  a  soda- 
cracker.  As  the  article  itself  conveys  that  knowledge, 
the  word  is  superfluous.  Mark  the  cracker  ''Uneeda,'* 
and  an  entirely  different  result  follows.  The  word  is  a 
trademark.^^  The  word,  so  afiixed,  meets  the  require- 
ments of  all  the  definitions  given  herein.  It  is  a  distin- 
guishing indication  of  origin  and  ownership.  But  take 
an  example  of  another  kind  of  word  applied  to  a  common 
staple  article  of  merchandise.  "Flour"  stamped  on  a 
sack  of  flour  is  meaningless.  "Patent  Flour"  means 
something  more.  "Minnesota  Patent  Flour"  means  pat- 
ent flour  made  in  Minnesota.  Clearly  the  word  "flour" 
alone,  and  the  words  "Patent  Flour"  together,  cannot 
be  called  tradenames,  though  they  are  names  used  in 
trade.  They  are  of  common  right.  They  can  be  truth- 
fully applied  to  flour  regardless  of  the  place  where,  or 
the  person  by  whom,  it  is  produced.  "Minnesota  Patent 
Flour"  is  not  a  trademark.  It  is  of  common  right  to 
all  persons  producing  patent  flour  in  Minnesota.  But  it 
is  a  tradename,  because  it  will  be  a  medium  of  fraud  if 
persons  producing  flour  elsewhere  than  in  Minnesota  are 
permitted  to  apply  it  to  their  flour.^^ 

To  use  another  example  of  a  very  common  class.  Any 
one  can  make  soap  and  mark  it  "Soap."  Any  soap 
manufacturer  can  call  his  soap  "Best  Soap."  A  partic- 
ular manufacturer  adds  his  name  to  this  mark  and  pro- 
duces '  *  Babbitt 's  Best  Soap. ' '    He  has  not  made  a  trade- 

14_lSrational  Biscuit  Co.  v.  Mills  Co.  v.  Eagle,  30  C.  C.  A.  386, 
Baker.  95  Fed.  Rep.  135.  86  Fed.  Rep.  608. 

15 — Pillsbury  -  Washburn  Flour 


§  3.]  PREFATORY. 


11 


mark  but  he  has  made  a  tradename.^''  Another  person 
named  Babbitt  entering  the  market  subse(iuently  must 
clearly  distinguish  his  soap  from  that  of  the  other  Bab- 
bitt. 

An  example  of  a  descriptive  of  the  composition  of  the 
article  itself  is  '^ Cellular  Cloth,"  a  cloth  fabric  having 
cells  in  its  texture.  This  is  not  a  tradename,'^  while 
''Camel's  Hair"  belting  is.^® 

The  reason  for  the  distinction  lies  solely  in  the  fact 
that  the  latter  words  became  established  in  the  trade  as 
designating  the  goods  of  the  first  introducer.  While  the 
two  marks  on  their  face  are  in  identically  the  same  cate- 
gor}%  the  circumstances  surroimding  their  commercial 
use  have  rendered  the  first  strictly  of  common  right,  and 
the  second  that  sort  of  quasi-trademark  which  for  con- 
venience, and  because  of  the  inadequacy,  of  our  vocabu- 
lary, we  are  constrained  to  call  a  tradename. 

With  all  of  these  distinctions  before  us,  and  having  re- 
gard solely  to  the  meaning  which  should  attach  to  the 
word  ' '  tradename  "  if  it  is  to  be  accurately  differentiated 
from  the  technical  trademark,  on  the  one  hand,  and  the 
names  completely  publici  juris  employed  in  commerce  on 
the  other,  the  author  submits  the  following  definition: 
A  tradename  is  a  word  or  phrase  by  which  a  business  en- 
terprise or  business  location  or  specific  articles  of  mer- 
chandise from  a  specific  source  are  known  to  the  public, 
and  which  when  applied  to  merchandise  is  generic  or  de- 
scriptive and  hence  not  susceptible  of  appropriation  as 
a  technical  trademark. 

This  definition,  the  author  confidently  believes,  will 
aid  the  reader  in  properly  classifying  and  distinguishing 
the  ''trademark"  and  "tradename"  cases,  and  that  it 
properly  includes  not  only  commeTcial  names  other  than 
those  applied  to  merchandise,  but  those  names  applied 

16— Babbitt  v.  Brown,    68    Hun     ton,  L.  R.   (1899)   App.  Cas.  326. 
515.  18 — Reddaway  v.  Banham,  L.  R. 

17— Cellular  Clothing  Co.  v.  Max-     (1896)  App.  Cas.  199. 


12  HOPKINS   ON   TRADEMARKS.  [§  4 

to  mercliandise  whicli  though  they  are  not  trade- 
marks have  acquired  a  secondary''  meaning  in  the  trade 
and  hence  are  protected  in  equity  against  their  use  by 
another  in  fraudulent  competition. 

The  English  text-writer,  Mr.  Kerly,  has  included  this 
class  of  words  in  his  treatment  of  "tradenames."  He 
says:  **A  name  which  is  applied  or  attached  to  a  trad- 
er's goods  when  they  are  offered  for  sale,  so  as  to  distin- 
guish them  from  similar  goods,  and  to  identify  them  with 
him,  or  with  his  successors  as  the  owners  of  a  particular 
business,  as  being  made,  worked  upon,  imported,  select- 
ed, certified,  or  sold  by  him  or  them,  is  a  trademark. 
And  if  it  is  within  any  of  the  classes  enumerated  in  sec. 
64  (of  the  British  Patents,  Designs  and  Trademarks 
Acts),  it  may  be  registered  as  a  trademark.  But  wheth- 
er or  not  the  name  is  applied  or  attached  to  the  goods, 
so  as  to  conform  to  the  definition  just  stated,  or  regis- 
tered as  a  trademark,  if  it  is  in  fact  known  in  the  market 
as  the  distinctive  name  of  the  goods  of  a  particular  trad- 
er, no  one  else  may  use  it  for  dealings  in  other  goods  of 
the  same  class  as  those  in  connection  with  which  it  has 
acquired  its  distinctive  significance.  *  *  *  The  qual- 
ified right  in  the  tradename— a  right  to  prevent  a  de- 
fendant from  passing  off  his  goods  as  those  of  the  plain- 
tiff by  the  use  of  it— exists  only  with  regard  to  goods  of 
the  kind  for  which  the  plaintiff  uses  it,  and  to  which  the 
connection  with  his  business  suggested  by  the  use  of  the 
name  extends.  "^^ 

§  4.  Earliest  recognition  of  trademarks.— While  the 
reports  of  the  first  English  trademark  case  are  not  har- 
monious, it  is  probable  that  the  report  of  Popham  is  sub- 
stantially correct.  It  is  as  follows:  ''An  action  upon 
the  case  was  brought  into  the  common  pleas  by  a  cloth- 
ier that  whereas  he  had  gained  great  reputation  for  his 
making  of  his  cloth  by  reason  of  which  he  had  great  ut- 

19— Kerly  on  Trademarks,  2nd    Ed.,  London  1901,  p.  475. 


§  5]  PREFATORY.  13 

terance  to  liis  great  benefit  and  profit,  and  that  lie  used 
to  set  his  mark  to  liis  eloth  whereby  it  sliouid  be  known 
to  be  his  cloth;  and  another  clothier  perceiving  it  used 
the  same  mark  to  his  ill-made  cloth  on  purpose  to  deceive 
him,  and  it  was  resolved  that  the  action  did  well  lie."-" 

§  5.  The  evolution  of  the  law  of  trademarks.— This  de- 
cision, rendered  in  1590,  was  the  first  legal  recognition  of 
trademarks.  The  growth  of  that  recognition  was  very 
gradual,  however,  for  as  late  as  1742  we  find  Lord  Hard- 
wicke  saying  that  he  ''knew  no  instance  of  restraining 
one  trader  from  making  use  of  the  same  mark  with  an- 
other,"-^ although  the  learned  chancellor  takes  judicial 
cognizance  of  the  wide-spread  use  of  trademarks,  observ- 
ing that  ''every  particular  trader  had  some  particular 
mark  or  stamp."  And  a  century  later  Lord  Langdale 
said:  "It  does  not  seem  to  me  that  a  man  can  acquire 
l^roperty  merely  in  a  name  or  mark."-- 

§  6.  The  relative  protection  given  by  patents  and 
trademarks.— "Usually  the  protection  given  by  the  pat- 
ent is  far  greater,  though  of  less  duration  in  time,  than 
that  obtained  by  the  use  of  a  trademark,  because  if  an 

20 — Southern   (or  Southerne)   v.  trademark     is    a     property    right. 

How,    2   Popham,    144;     Cro.    Jac.  Hall   v.   Barrows,   4    DeG.    J.   &    S. 

471;     2  Rolle,  28;    Cox,  633;     Seb.  150;    33  L.  J.  Ch.  204;    10  Jur.  N- 

Dig.  1.  S.  55;    9  L.  T.  N.  S.  561;   Cox,  Man- 

21— Blanchard   v.    Hill,     2    Atk.  ual,     Case    No.     215.     Opinion    of 

484;    Cox,  633;     Seb.   Dig.   2.     Mr.  Westbury,  L.  C,  in  Leather  Cloth 

Sebastian    observes     of     this     de-  Co.     v.    American     Leather    Cloth 

cision:       "The  decision  seems  in  a  Co.,  4  DeG.  J.  &  S.  141;    Lord  Cran- 

great  measure  to  have  been  found-  worth,  in   House  of  Lords,   S.   C, 

ed  upon  a  dread  of  setting  up  a  11  H.  L.  C.  533;    Lord  Kingsdown. 

monopoly,  the  distinction  between  in  House  of  Lords,  S.  C,  11  H.  L. 

a  trademark  and  a  patent  not  be-  C.    544;     Messerole   v.   Tynberg,   4 

ing  clearly   present    to    his    lord-  Abb.  Pr.  N.  S.  410;     36  How.  Pr. 

ship's    mind."      Sebastian,    Trade-  14;     Cox,  479;    Oilman  v.   Hunne- 

marks   (4th  ed.),  p.  6.  well,  122  Mass.  139;    Cox,  Manual. 

22 — 1842.      Perry    v.   Truefitt,    6  Case  No.  541;     Fish  Bros.  Wagon 

Beav.  66;    1  L.  T.  0.  S.  384;    Seb.  Co.  v.  Fish  Bros.  Mfg.  Co.,  95  Fed. 

73;  Cox,  644,646.    It  is  now  clearly  Rep.  457,  461,  37  C.  C.  A.  146. 
established    that    the    right    to    a 


14  HOPKINS   ON   TRADEMARKS.  [§  7 

article  is  patented,  nobody  but  the  owner  of  the  patent 
can  without  his  consent  make  or  sell  anything  embody- 
ing the  same  principles  or  elements,  while  a  trademark 
only  secures  one  in  the  use  of  the  name  or  emblem 
adopted  by  him  and  applied  to  the  article.  "2- 

§  7.  Trademarks  distinguished  from  patents  and  copy- 
rights.—While  trademarks  to  a  degree  partake  of  the  na- 
ture of  both  patents  and  copyrights,  and  the  three  have 
many  governing  legal  principles  in  common,  there  are 
wide  differences  separating  each  from  the  others.  As 
stated  by  Mr.  Justice  Miller  in  Trademark  Cases, ^^  ''the 
ordinary  trademark  has  no  necessary  relation  to  inven- 
tion or  discovery.  The  trademark  recognized  by  the 
common  law  is  generally  the  growth  of  a  considerable 
period  of  use,  rather  than  a  sudden  invention.  It  is  of- 
ten the  result  of  accident  rather  than  design,  and  when 
under  the  act  of  congress  it  is  sought  to  establish  it  by 
registration,  neither  originality,  invention,  discovery, 
science  or  art  is  in  any  way  essential  to  the  right  con- 
ferred by  that  act.  If  we  should  endeavor  to  classify  it 
under  the  head  of  writings  of  authors,  the  objections  are 
equally  strong.  In  this,  as  in  regard  to  inventions,  orig- 
inality is  required.  And  while  the  word  ivritings  may 
be  liberally  construed,  as  it  has  been,  to  include  original 
designs  for  engravings,  prints,  etc.,  it  is  only  such  as  are 
original,  and  are  founded  in  the  creative  powers  of  the 
mind."  And  in  the  House  of  Lords,  in  1882,  Lord  Black- 

22— Allen,   J.,    in  Dover   Stamp-  Rep.  575;    Sarrazin  v.  W.  R.  Irby 

ing  Co.  V.  Fellows,  163  Mass.  191,  Cigar     Co.,     93     Fed.     Rep.     624, 

40   N.    E.    Rep.    105,     47     Am.     St.  626,      35      C.       C.      A.      496.      A 

Rep.  448,  28  L.  R.  A.  448.  trademark    "may  be,    and  usually 

23 — 100  U.   S.    82,   94.     See  also  is,  wholly  destitute  of  originality." 

Taylor  v.  Carpenter,  2  Sandf.  Ch.  Mr.  Justice  Brown  in  Duer  v.  Cor- 

603;    11  Paige,  292;    Cox,  45;    Cox,  bin   Cabinet    Lock   Co.,   149   U.    S. 

Manual,    Case    No.     84;     Levy   v.  216,  223.     To  the  same  effect,  see 

Waitt,  21  U.  S.  App.  394,  61  Fed.  Wm.   J.   Moxley  Co.    v.    Braun  & 

Rep.  1008,  10  C.  C.  A.  227;  Hoyt  v.  Fitts  Co.,  93  111.  App.  183. 
Hoyt,  143  Pa.  St.  623;    24  Am.  St. 


I 


8] 


PREFATORY. 


15 


bum  said,^"*  ''trademarks  have  sometimes  been  likened 
to  letters  patent  and  sometimes  to  copyrights,  from  both 
of  which  they  differ  in  many  respects.  And  I  think,  to 
borrow  a  phrase  used  by  Lord  Ellenborough  in  Waring 
V.  Cox,-^  with  reference  to  a  different  branch  of  the  law, 
'much  confusion  has  arisen  from  similitudinary  reason- 
ing on  the  subject.'  " 

§  8.  Function  —The  function  of  a  trademark  is  to  con- 
vey to  the  purchaser  knowledge  of  the  origin,  source, 
ownership  or  manufacture  of  the  article  to  which  it  is 
applied.-"  As  will  be  shown  hereinafter,  the  trademark 
need  neither  indicate  the  manufacturer  or  the  place  of 
the  article's  manufacture,  but  may  indicate  either  the 


24 — Johnston  v.  Orr  Ewing,  7 
App.  Cas.  219,  228. 

25—1   Camp.   369. 

26 — "The  function  of  a  trade- 
mark is  to  indicate  to  the  public 
the  origin,  manufacture  or  owner- 
ship of  articles  to  which  it  is  ap- 
plied, and  thereby  secure  to  its 
owner  all  benefit  resulting  from 
his  identification  by  the  public 
with  the  articles  bearing  it.  No 
person  other  than  the  owner  of  a 
trademark  has  a  right,  without 
the  consent  of  such  owner,  to  use 
the  same  on  like  articles,  because 
by  so  doing  he  would  in  substance 
falsely  represent  to  the  public  that 
his  goods  were  of  the  manufac- 
ture or  selection  of  the  owner  of 
the  trademark,  and  thereby  would 
or  might  deprive  the  latter  of  the 
profit  he  otherwise  might  make 
by  the  sale  of  the  goods  which  the 
purchaser  intended  to  buy.  Where 
a  trademark  is  infringed  the  es- 
sence of  the  wrong  consists  in  the 
sale  of  the  goods  of  one  manufac- 
turer or  vendor  as  those  of  an- 
other, and  it  is  on  this  ground  that 
a   court   of   equity   protects   trade- 


marks. It  is  not  necessary  that  a 
trademark  should  on  its  face  show 
the  origin,  manufacture  or  owner- 
ship of  the  articles  to  which  it  is 
applied.  It  is  sufficient  that  by 
association  with  such  articles  in 
trade  it  has  acquired  with  the 
public  an  understood  reference  to 
such  origin,  etc."  Bradford,  J.,  in 
Dennison  Mfg.  Co.  v.  Thomas  Mfg. 
Co.,    94   Fed.  Rep.   651,  656. 

"The  sign,  symbol  or  mark  may 
be  purely  fanciful,  and  convey  no 
information  as  to  the  name  of  the 
producer.  But  the  essential  thing 
is  that  it  shall  be  designed  and 
used  to  indicate  the  origin  of  the 
article  and  that  all  articles  hav- 
ing the  same  mark  come  from  a 
common  source."  Lurton,  J.,  in 
Deering  Harvester  Co.  v.  Whitman 
&  Barnes  Mfg.  Co.,  91  Fed.  Rep. 
376,  380. 

"It  is  not  essential  to  property 
in  a  trademark  that  it  should  in- 
dicate any  particular  person  as  the 
maker  of  the  article  to  which  it 
Is  attached."  Danforth,  J.,  in  God- 
illot  v.  Harris.  81  N.  Y.  263. 


16  HOPKINS   ON   TRADEMARKS.  LS  ^ 

natural  product  of  the  earth,  or  the  handling  or  selection 
of  the  goods,  or  some  labor  that  has  been  performed  in 
connection  therewith.  It  serves  solely  to  guide  the  pub- 
lic to  the  goods  it  wants  to  buy,  acting  as  a  perpetual 
means  of  identification  and  advertisement  of  goods  of 
repute. 

§  9.  Nature  of  the  right  to  a  trademark.— The  right  to 
a  trademark  is  a  right  of  property,-'  which  the  state  may, 
in  the  exercise  of  its  police  power,  protect  by  appropriate 
penal  legislation.  This  right  of  property  is,  in  the  Unit- 
ed States,  treated  as  a  common-law  right,  and  in  no  wise 
dependent  upon  written  law  for  its  inception.^^ 

Lord  Cranworth  referred  to  this  right  as  ''a  right 
(s-hich  can  be  said  to  exist  only  and  can  be  tested  only  by 
its  violation."-"  While  it  is  true  that  the  right  can  only 
be  tested  after  it  has  been  violated,  or  its  violation  has 
been  threatened,  it  is  certainly  untrue  that  it  exists  ''only 
by  its  violation,"  because  there  is  no  violation  of  a  right 
not  pre-existing.  Judge  Folger,  speaking  for  the  New 
York  Court  of  Appeals,  critised  this  dictum,  saying,  "but 
its  violation  is  when  one  adopts  or  imitates,  and  applies 
to  an  article  of  his  manufacture  the  name  or  mark  pre- 
viously used  by  another  as  a  designation  for  his  produc- 
tion. *  *  *  It  is  a  matter  of  property,  and  the  profit- 
able use  of  property."^'' 

27— Derringer  v.  Plate,  29  Cal.  Moorman  v.  Hodge,  2  Sawyer,  78, 
292;  87  Amer.  Dec.  170;  R.  Cox,  85,  Fed.  Case  No.  9783;  L. 
324;  Seb.  249;  Bass,  Ratcliff  &  H.  Harris  Drug  Co.  v.  Stucky, 
Gre'tton  (Ltd.)  v.  Feigenspan,  9^  46  Fed.  Rep.  624,  626;  Bat- 
Fed.  Rep.  206,  212;  Boston  Diatite  tie  v.  Finlay,  50  Fed.  Rep.  106; 
Co.  V,  Florence  Mfg.  Co.,  114  Mass.  Hennessy  v.  Braunschweiger,  89 
69;  Lawrence  Mfg.  Co.  v.  Tennes-  Fed.  Rep.  664;  Sarrazin  v.  W.  R. 
see  Mfg.  Co.,  138  U.  S.  537,  548;  Irby  Cigar  Co.,  93  Fed.  Rep.  624, 
Liggett  &  Myer  Tobacco  Co.  v.  627,  35  C.  C.  A.  496. 
Hynes,  20  Fed.  Rep.  883;  G.  G.  29— Farina  v.  Silverlock,  6  DeG., 
White' Co.  V.  Miller,  50  Fed.  Rep.  M.  &  G.  214,  217. 
277    279.  ^'^ — Congress    &    Empire  Spring 

28— Trademark  Cases,  100  U.  S.  Co.  v.  High  Rock  Congress  Spring 

82;     Derringer    v.     Plate,    supra;  Co.,  45  N.  Y.  291. 


§  10]  PREFATORY.  17 

Much  legislation  has  taken  place  tending  to  aid  the 
common-law  remedies  and  afford  more  effective  redress 
against  trademark  piracy,  but  with  the  solitary  excep- 
tion of  California  ^^  it  has  nowhere  been  held  in  the  Unit- 
ed States  that  compliance  with  a  statute  is  a  prerequisite 
to  the  acquisition  of  a  trademark.  The  contrary  rule 
obtains  in  England;  registration  being  necessary  to  en- 
title the  owner  to  sue  for  infringement."^-  A  peculiar 
element  of  the  trademark  right  is  that  it  must  be  used 
as  an  entirety.^"'  The  owner  of  a  trademark  cannot  con- 
vey to  others  territorial  rights  to  its  use,''*  and  a  part- 
ner's interest  in  the  trademarks  owned  by  the  partner- 
ship cannot  be  levied  upon  by  or  subjected  to  the  pay- 
ment of  claims  of  his  personal  creditors."^ 

§10.  The  test  of  exclusiveness.— The  trademark  right 
must  be  exclusive;  by  this  test  it  stands  or  falls.  As 
Judge  Cochran  has  said,  "what  makes  a  mark  affixed  by 
a  seller  to  goods  produced  or  selected  by  him  a  technical 
trademark  (i.  e.,  one  whose  exclusive  use  by  him  in 
marking  goods  of  the  same  or  like  character  will  be  pro- 
tected) is  that  when  it  is  affixed  to  goods  of  that  char- 
acter it  amounts  to  a  representation  that  they  are  the 
goods  of  the  person  who  has  adopted  it  as  his  trademark. 
If  it  does  not  amount  to  such  a  representation,  it  is  not  a 
technical  trademark. '  '^" 

31— Whittier   v.    Dietz,     66    Cal.  Wood,  Fed.  Case  No.  9026;    4  Cliff. 

78.    The  evil  effect  of  this  decision  461. 

has  since  been  obviated  by  the  en-  34— Snodgrass  v.  W'ells,   11   Mo. 

actment    of    the     present    section  App.    590.     Per   contra   as    to   the 

3199  of  the  Political  Code  of  Call-  title   of    a    periodical    publication 

rornia.  which    provides  that  "any  (not  a   technical  trademark),  see 

person  who  has  first  adopted  and  Estes  v.    Williams,   21    Fed.    Rep. 

used  a  trademark  or  name,  wheth-  189. 

er  within  or  beyond  the  limits  of  35— Taylor    v.     Bemis.    4    Biss. 

this  state,   is   its   original  owner."  406;    Cox,  Manual.  132;    Fed.  Case 

32 — The       Merchandise      Marks  No.  13779. 

Acts,   1887-1894    (50   and   51  Vict.,  36— Bissell  Chilled   Plow  Works 

c.  28).  V.  T.  M.  Bissell  Plow  Co.,  121  Fed. 

33— Manhattan      Med.      Co.       v.  Rep.  357,   364. 


18  HOPKINS   ON   TRADEMARKS.  [§  H 

§  11.  Requisites  of  a  valid  trademark.— As  seen  in  our 
definition,  a  trademark  must 

(a)  Be  used  in  lawful  commerce; 

(b)  Be  in  some  way  applied  or  affixed  to  a  subject  of 
lawful  commerce; 

(c)  Be  distinctive,  identifying  the  character  of  the 
article  to  which  it  is  so  affixed. 

As  comprehensive  and  concise  a  statement  of  the  requi- 
sites of  a  valid  trademark  as  can  be  found  in  the  books 
is  as  follows:  "The  trademark  must  be  used  to  indicate 
not  the  quality,  but  the  origin  or  ownership  of  the  article 
to  which  it  is  attached.  It  may  be  any  sign,  mark,  sym- 
bol, word  or  words,  which  others  have  not  an  equal  right 
to  employ  for  the  same  purpose.  "^^ 

These  are  f undainental  conditions  which  are  never  var- 
ied, and  to  which  there  can  be  no  exception.  There  are 
further  conditions  which  we  will  examine  in  detail  in  a 
subsequent  chapter. 

§  12.  Perpetual  existence.— The  life  of  a  trademark  is 
as  long  as  its  continuous  use  by  the  owner  or  his  as- 
signees. It  is  only  terminated  by  abandonment,  which 
we  will  deal  with  later 

"A  trademark  may  increase  in  value  to  its  owners  by 
use,  and  the  law  could  not  put  a  time  limit  on  the  owner's 
right  to  it  any  more  than  it  could  put  a  limit  upon  his 
right  to  use  any  other  article  of  property. ' '  ^^ 

The  act  of  1881  provided  (§5)  that  a  certificate  of  reg- 
istry shall  in  the  case  of  articles  manufactured  in  this 
country  remain  in  force  for  thirty  years  from  its  date, 
subject  to  renewal  for  a  like  period  at  any  time  during 
the  six  months  prior  to  the  expiration  of  the  term  of  thir- 
ty years;  so  that  all  protection  and  benefit  of  that  act 
will  be  lost  by  failure  to  renew  within  the  period  stated. 

37— Earl,  Commissioner    of    Ap-      38— Hoyt   v.    Hoyt,    143    Pa.    623, 
peals,  in  Newman  v.  Alvord,  51  N.     22  Atl.  Rep.  755. 
Y.  189,  193. 


§  13]  PREFATORY.  19 

But  congress  was  careful  to  provide  further  ( §  11  act  of 
1881)  that  nothing  in  the  act  shall  be  construed  as  un- 
favorably al'l'ecting  a  claim  to  a  trademark  after  the  term 
of  registration  shall  have  expired. 

By  the  Act  of  1905  (§  12),  the  force  of  the  certificate  is 
limited  to  twenty  years'  duration  with  renewal  privi- 
leges, and  ^23  provides  that  nothing  in  the  act  "shall 
prevent,  lessen,  impeach,  or  avoid  any  remedy  at  law  or 
in  equity  which  any  party  aggrieved  by  any  wrongful 
use  of  any  trademark  might  have  had  if  the  provisions  of 
this  iVct  had  not  been  })assed." 

§  13.  Territorial  limitation.— Unlike  a  patent,  a  trade- 
mark knows  no  territorial  limitation.  The  courts  of  the 
United  States,  and  those  of  the  several  states, 
are  open  to  the  owners  of  trademarks  of  what- 
ever citizenship  or  nationality  who  may  seek  to 
protect  their  trademarks  against  plracy.^^  The 
act  of  congress  of  1881  provided  for  the  regis- 
tration of  trademarks  owned  by  aliens  located  in 
any  foreign  country  or  tribe,  which,  by  treaty,  conven- 
tion or  law,  affords  similar  privileges  to  citizens  of  the 
United  States"  (Act  of  1881,  sec.  1),  and  substantially 
the  same  provision  is  contained  in  the  Act  of  1905,  Sec.  1. 
The  acquisition  of  a  valid  trademark  in  any  place  carries 
with  it  the  right  to  use  the  mark  everywhere.  ^*^  This  is 
subject  to  the  exception  that  a  foreigner  doing  business 

39— state  v.  Gibbs,  56  Mo.  133;  J.  423;    2  Jur.  N.  S.  929;    30  L.  T. 

Taylor  v.  Carpenter    (1),  3   Story,  62;    Seb.  151;     Collins    Co.    v.    Co- 

458;    Cox.  14;     Seb.   78;     Coats  v.  hen,  3  K.  &  J.  428;     3  Jur.  N;  S. 

Holbrook,  2  Sandf.  586;     Cox,  20;  929;     29   L.  T.   245;     30  L.  T.  62; 

Seb.  79;    Taylor  v.  Carpenter  (2),  5  W.  R.  676;    Seb.  152;    Collins  Co. 

2  Wood.  &  M.  1;    Cox,  32;    9  L.  T.  v.  Reeves,  28  L.  J.  Ch.  56;    4  Jur. 

514;     Seb.   83;     Taylor  v.   Carpen-  N.  S.  865;    33  L.  T.  101;    6  W.  R. 

ter    (3),   2    Sandf.   603;     11    Paige,  717;     Seb.     164;      Collins     Co.     v. 

292;     Cox,  45;     Seb.   84;     Lemoine  Walker,  7  W.  R.  22;    Seb.  171. 
V.  Ganton,    2    E.    D.    Smith,  343;         40— Except   that  an    alien    who 

Cox,  142;     Seb.  125;    Derringer  v  abandons    his    trademark   in   this 

Plate,  29  Cal.  292;    Cox,  324;    Seb.  country  is  not  re-vested  with  the 

249;    Collins  Co.  v.  Brown,  3  K.  &  right  to  use  it,   by    the    force  of 


20  HOPKINS   ON   TRADEMARKS.  [§  14 

in  his  own  countr}^  under  the  trademark  has  no  common- 
law  right  to  that  trademark  in  the  United  States,  as 
against  a  domestic  firm  which  had  established  business 
under  a  similar  trademark,  adopted  in  good  faith,  before 
the  alien  had  sold  any  goods  in  this  country.  ^^ 

In  a  recent  case,  an  assignment  of  a  trademark  limited 
to  certain  specified  states  has  been  sustained  and  an  in- 
fringer enjoined  as  to  those  states.  The  doctrine  of  this 
section  was  not  invoked,  however,  as  far  as  the  opinion 
discloses.  ^-  As  to  a  corporate  name,  the  injunction  has 
been  limited  in  its  operation,  to  exclude  a  defendant  from 
doing  business  in  the  state  of  New  York.  '^^ 

In  a  case  involving  the  use  of  the  word  ''Liliputian" 
in  a  mail-order  business,  a  Chicago  defendant  was  en- 
joined at  the  instance  of  a  New  York  complainant  be- 
cause of  the  occui^ancy  by  each  through  the  mails  of  a 
common  business  territory.  ^^ 

§  14.  The  necessity  of  user.— There  can,  finally,  be  no 
right  in  or  to  a  trademark  apart  from  its  use.  ''The 
mere  sale  of  a  trademark  apart  from  the  business  in 
which  it  has  been  used  confers  no  right  of  ownership,  be- 
cause no  one  can  claim  the  right  to  sell  his  goods  as 
goods  manfactured  by  another.  To  permit  this  to  be 
done  would  be  a  fraud  upon  the  public.^^  To  quote  from 
a  New  York  court,  "There  is  no  sach  thing  as  a  trade- 
mark 'in  gross,'  to  use  that  term  of  analogy.  It  must 
be  'appendant'  of  some  particular  business  in  which  it 
is  actually  used  upon,  or  in  regard  to  specified  arti- 

subsequent  legislation   in  his  own  Preserving  Co.,  131  Fed.  Rep.  359. 

country.      Saxlehner    v.     Eisner  &  43 — Employers'    Liability   Assur. 

Mendelson  Co.,    91    Fed.  Rep.  536,  Corp.,   Ltd.,   v.   Employers'   Liabil- 

539.     Saxlehner  v.   Eisner  &  Men-  ity   Ins.    Co.,   16   N.   Y.    Supp.   397, 

delson  Co.  (3),  179  U.  S.  19,  36.  400. 

41 — Richter    v.    Anchor  Remedy  44 — Ball  v.   Best,  135  Fed.  Rep. 

Co.,  52  Fed.  Rep.  455;    affirmed  in  434. 

Richter  v.  Reynolds,  59  Fed.  Rep.  45 — Witthaus   v.   Braun,   44   Md. 

577,  8  C.  C.  A.  220.  303;     22  Amer.  Rep.  44. 

42 — Griggs,  Cooper  &  Co.  v.  Erie 


§14] 


PREFATORY. 


21 


cles."^^  It  follows,  therefore,  that  the  owner  of  a  trade- 
mark can  not  sell  territorial  rights  in  a  trademark  to  dif- 
ferent persons,  so  as  to  enable  them  to  make  and  sell 
goods  as  being  made  by  him."*^  "It  goes  without  saying 
that  a  trademark  or  tradename  can  only  be  acquired  Ijy 
adoption  accompanied  with  actual  use. "^'^  The  invent- 
or of  a  system  of  manufacturing  garments,  who  has  never 
engaged  in  their  actual  manufacture  and  sale,  has  no 
trademark  right  in  a  mark  to  be  applied  to  such  gar- 
ments.^^ 

A  mere  casual  use,  inteiTupted,  or  for  a  brief  period, 
will  not  suffice  to  establish  a  trademark  right  in  the 
mark;'"'*^  there  must  be  such  a  user,  as  to  its  length  and 
publicity,  as  will  show  an  intention  to  adopt  the  mark  as 
a  trademark  for  a  specific  article.^ ^ 


46— Weston  v.  Ketcham  (2),  51 
How.  Pr.  455;  Seb.  487;  Pinto  v. 
Badman,  8  R.  P.  C.  181;  Cartmell^ 
270;  Dixon  Crucible  Co.  v.  Gug- 
genheim, 7  Phila.  408;  2  Brewst. 
321;  3  Am.  L.  T.  288;  Cox,  559; 
Seb.  331;  Cotton  v.  Gillard,  44  L. 
J.  Ch.  90;  Seb.  447;  McAndrew  v. 
Bassett,  4  DeG.  J.  &  S.  380;  33  L. 
J.  Ch.  566;  10  Jur.  N.  S.  550;  10 
L.  T.  N.  S.  442;  12  W.  R.  777;  4 
N.  R.  123;  Seb.  234;  Kidd  v. 
Johnston,  100  U.  S.  617;  Weston 
V.  Ketcham  (1),  39  N.  Y.  54; 
Leather  Cloth  Co.  v.  American 
Leather  Cloth  Co.,  4  DeG.  J.  &  S. 
137;  11  H.  L.  C.  523.  The  Fair  v 
Jose  Morales  &  Co.,  82  111.  App. 
499. 

47 — Snodgrass  v.  Wells,  11  Mo. 
App.  590.  But  in  another  case  the 
assignment  by  the  English  pub- 
lisher of  "Chatterbox"  of  the  right 
to  publish  a  "Chatterbox"  in  the 
United  States  was  sustained.  Estes 
V.  Williams,  21  Fed.  Rep.  189. 
The  name,  being  that  of  a  periodi- 


cal publication,  was  not  a  tech- 
nical trademark. 

48 — Kathreiner's  Malz  Kaffee 
Fab.  V.  Pastor  Kneipp  Med.  Co.,  82 
Fed.  Rep.  321,  325,  per  Jenkins,  J. 

49 — Jaeger's  Sanitary  W.  S.  Co. 
V.  Le  Boutillier,  47  Hun,  521.  Thus 
under  the  English  statutes  a  regis- 
trant is  not  entitled  to  register  a 
mark  for  goods  in  which  he  does 
not  deal  and  in  which  he  does  not 
actually  intend  to  deal.    John  Batt 

6  Co.  V.  Dunnett,  L.  R.  (1899)  A. 
C.  428. 

50— Menendez  v.  Holt,  128  U.  S. 
514;  Levy  v.  Waitt  (1),  56  Fed. 
Rep.  1016;  Levy  v.  Waitt  (2).  61 
Fed.  Rep.  1008,  10  C.  C.  A.  227; 
Brower  v.  Boulton  (1),  53  Fed. 
Rep.  389;    Brower  v.  Boulton   (2), 

7  C.  C.  A.  567,  58  Fed.  Rep.  888; 
Macmahan  Pharmacal  Co.  v.  Den- 
ver Chemical  Mfg.  Co.,  113  Fed. 
Rep.  468,  51  C.  C.  A.  302.  Tetlow 
V.  Tappan,  85  Fed.  Rep.  774;  Heub- 
lein  V.  Adams,  125  Fed.  Rep.  782. 

51 — Kohler  Mfg.  Co.  v.  Beeshore, 


22 


HOPKINS   ON   TRADEMARKS. 


:§i^ 


§  15.  Trademarks  as  subjects  of  sale,  assignment  or 
bequest.— lu  the  early  adjudicatious  the  assignability  of 
trademarks  was  not  clearly  established.^ - 

It  can  now  be  said,  however,  that  trademarks  are  gen- 
erally assignable  during  the  life-time  of  the  owner  of  the 
mark,  and  capable  of  transmission  at  his  death.  Indeed, 
this  rule  is  the  necessary  and  indispensable  correlative 
of  the  rule  that  trademarks  have  perpetual  existence. 
But  there  is  the  necessary'  qualification  that  with  the 
trademark  must  go  the  good-will  of  the  business,  the 
right  to  select  or  manufacture  the  article  to  which  the 
former  owner  has  been  in  the  habit  of  affixing  the  trade- 
mark in  use."^    Any  other  course  would  tend  to  mislead 


59  Fed.  Rep.  572,  576,  8  C.  C.  A. 
215;  Richter  v.  Reynolds,  59  Fed. 
Rep.  577,  579;    8  C.  C.  A.  220. 

52 — See  Corwin  v.  Daly,  7  Bos. 
222;  Cox,  265,  where  the  court 
says,  referring  to  a  name  used  as 
a  trademark:  "The  employer  of 
it  can  neither  give  any  special 
right  to  another,  nor  abandon  it 
to  the  community  so  as  forever  to 
take  away  the  right  of  employing 
it  to  designate  his  wares."  In  an- 
other case  it  has  been  held  that 
one  can  "so  sell  his  name  as  to  de- 
prive himself  of  the  right  to  use 
it  for  his  own  manufacture,  and 
give  the  right  to  another."  Pro- 
basco  V.  Bouyon,  1  Mo.  App.  241. 
In  a  later  case  before  the  same 
court,  however,  the  court  said: 
"We  think  the  answer  to  this 
question  depends  upon  the  effect 
which  the  use  of  the  name,  in 
each  particular  instance,  is  shown 
to  have  upon  the  minds  of  the  pub- 
lic," and  concluded  that  if  the 
public  would  be  led  to  believe  the 
assignor  was  still  manufacturing 
the  goods,  when  they  were  the 
manufacture  of  another,  the  trans- 
action would  be  a  fraud  upon  the 


public  and  the  use  of  the  assigned 
name  would  not  be  protected. 
Skinner  v.  Oakes,  10  Mo.  App.  45; 
Cox,  Manual,  680.  This  dictum 
was  quoted  with  approval  in  Oakes 
V.  Tonsmierre,  4  Woods,  547;  Price 
&  Steuart,  817,  49  Fed.  Rep.  447. 

53 — Atlantic  Milling  Co.  v.  Rob- 
inson, 20  Fed.  Rep.  217;  Massam 
v.  Cattle  Food  Co.,  L.  R.  14  Ch.  D. 
748;  Ex  parte  Lawrence,  44  L.  T. 
N.  S.  98;  Seb.  630;  Re  Wellcome, 
L.  R.  32  Ch.  D.  213;  Leather 
Cloth  Co.  V.  American  Leather 
Cloth  Co.,  4  DeG.  J.  &  S.  137;  33 
L.  J.  Ch.  199;  Seb.  223;  Goodman 
V.  Meriden  Brittania  Co.,  50  Conn. 
139;  "Witthaus  v.  Braun,  44  Md. 
303;  22  Am.  Rep.  44;  Seb.  492; 
Skinner  v.  Oakes,  10  Mo.  App.  45; 
Taylor  v.  Bemis,  4  Biss.  406,  Fed. 
Case  13779;  McVeagh  v.  Valencia 
Cigar  Factory,  32  Off.  Gaz.  1124: 
Price  &  Steuart,  970;  Oakes  v.  Tons- 
mierre, 4  Woods,  547,  49  Fed. 
Rep.  447;  Price  &  Steuart,  817; 
Baldwin  v.  Von  Micheroux,  25  N. 
Y.  Supp.  857;  Morgan  v.  Rogers, 
19  Fed.  Rep.  596;  12  Off.  Gaz. 
1113;  Smith  v.  Imus,  32  Alb.  L. 
J.  455;    Cotton  v.  Gillard,  44  L.  J. 


§  15]  PREFATORY.  '23 

the  public.  It  is  irrovided  by  section  70  of  the  English 
Patents,  Designs  and  Trademarks  Act  of  1883  that  "A 
trademark,  when  registered,  shall  be  assigned  and  trans- 
mitted only  in  connection  with  the  good-will  of  the  busi- 
ness concerned  in  the  particular  goods  or  classes  of  goods 
for  which  it  has  been  registered,  and  shall  be  detennin- 
able  with  the  good-will."  No  corresponding  provision 
existed  in  the  act  of  congress  of  1881.  The  act  of  1905, 
§  10,  provides  **that  every  registered  trademark  .  .  . 
shall  be  assignable  in  connection  with  the  good-will  of 
the  business  in  which  the  mark  is  used." 

Inasmuch  as  there  can  be  no  title  in  a  trademark  apart 
from  the  good-will  of  the  business  in  which  it  is  used,  it 
follows  that,  in  an  assignment  of  the  business  and  good- 
will of  the  owner  of  the  mark,  the  title  to  the  trademark, 
without  being  specially  mentioned,  passes  to  the  as- 
signee,^"* It  is  not  so  clear,  however,  that  the  purchaser 
acquires  the  right  to  use  the  name  of  the  vendor,  this 

Ch.  90;  Smith  v.  Fair,  14  Ont.  Rep.  303;  22  Amer.  Rep.  44;  Seb.  492; 
729;  Burton  v.  Stratton,  12  Fed.  Morgan  v.  Rogers,  19  Fed.  Rep. 
Rep.  696;  Price  &  Steuart,  668;  596;  26  Off.  Gaz.  1113;  Cox,  Man- 
Pepper  V.  Labrot,  8  Fed.  Rep.  29;  ual,  692;  Merry  v.  Hoopes,  111  N. 
Chadwick  v.  Covell,  151  Mass.  190,  Y.  420;  Churton  v.  Douglas,  Johns. 
23  N.  B.  Rep.  1068;  Cox,  Manual,  174;  Fulton  v.  Sellers,  4  Brewst. 
716;  Cooper  v.  Hood,  26  Beav.  42;  Thompson  v.  Mackinnon,  2 
293;  Churton  v.  Douglas,  Johns.  Steph.  Dig.  726;  Lippincott  v. 
1(4;  Shipwright  v.  Clements,  19  Hubbard,  28  Pitts.  L.  J.  303;  Burk- 
W.  R.  599;  Sohier  v.  Johnson,  111  hardt  v.  Burkhardt  Co.,  4  Ohio  N. 
Mass.  238;  Gegg  v.  Bassett,  3  P.  358;  Listman  Mill  Co.  v.  Wm. 
Ont.  L.  Rep.  263;  Dant  v.  Head,  Listman  Mill  Co.,  88  Wis.  334; 
90  Ky.  255.  13  S.  W.  Rep.  1073;  J.  Prince  Mfg.  Co.  v.  Prince's  Metal- 
G.  Mattingly  Co.  v.  Mattingly,  96  lie  Paint  Co.,  39  N.  Y.  S.  R.  488; 
Ky.  430,  31  S.  W.  Rep.  985.  Menendez  v.  Holt.  128  U.  S.  514; 
54 — Shipwright  v.  Clements,  19  Hegeman  v.  Hegeman,  8  Daly,  1; 
W.  R.  599;  Seb.  350;  Congress  &  Sarrazin  v.  W.  R.  Irby  Cigar  Co., 
Empire  Spring  Co.  v.  High  Rock  93  Fed.  Rep.  624,  35  C.  C.  A.  496; 
Congress  Spring  Co.,  57  Barb.,  526;  Allegretti  v.  Allegretti  Chocolate 
Cox,  599;  45  N.  Y.  291;  10  Abb.  Cream  Co..  177  111.  129,  53  N.  E. 
Pr.  N.  S.  348;  6  Amer.  Rep.  82;  Rep.  487,  affirming  s.  c.  76  111.  App. 
4  Am.  L.  T.  168;  Cox,  624;  Seb.  581;  Snyder  Mfg.  Co.  v.  Snyder,  TA 
354;     Y.'itthaus   v.   Braun,    44   Md.  Ohio  St.  86,  43  N.  E.  Rep.  325. 


24 


HOPKINS   ON   TRADEMARKS. 


[§15 


right  being  affirmed  in  some  cases^'^  and  negatived  in 
otliers.^'^  It  would  seem  to  be  the  law  that  a  territorial 
right  to  use  a  trademark  cannot  be  assigned^'^  though 
in  the  case  of  the  name  of  a  periodical  publication  the 
contrary  rule  has  been  announced.^^ 

The  fact  of  a  trademark  containing  the  name  or  ini- 
tials of  a  former  owner  of  a  business  will  not  disentitle 
an  assignee  of  the  business  from  its  use,  because  the 
proper  name  is  treated  as  indicative  of  the  business 
rather  than  the  present  owner  of  the  business.^^  But  the 
courts  of  the  United  States  are  inclined  to  insist  that 
the  public  be  notified  of  the  change  of  ownership,  and 


55 — Banks  v.  Gibson,  34  Beav. 
566;  Levy  v.  Walker,  L.  R.  10  Ch. 
D.  463;  Webster  v.  Webster,  3 
Swanst.  490;  Clark  v.  Leach,  32 
Beav.  14;  Bond  v.  Milbourn,  20  W. 
R.  197;  Tussaud  v.  Tussaud,  38 
W.  R.  440;  Phelan  v.  Collender, 
13  N.  Y.  Sup.  Ct.  244;  Hoff  v.  Tar- 
rant &  Co.,  71  Fed.  Rep.  163; 
affirmed  in  Tarrant  &  Co.  v.  Hoff, 
76  Fed.  Rep.  959,  22  C.  C.  A.  644; 
J.  G.  Mattingly  Co.  v.  Mattingly,  96 
Ky.   430. 

56— Scott  v.  Rowland,  20  W.  R. 
208;  Lewis  v.  Langdon,  7  Sim. 
421;  Turner  v.  Major,  3  Gift.  442; 
Dence  v.  Mason,  41  L.  T.  N.  S.  573; 
Dickson  v.  McMaster,  18  Ir.  Jur. 
202;  Reeves  v.  Denicke,  12  Abb. 
Pr.  N.  S.  92;  Howe  v.  Searing,  10 
Abb.  Pr.  264;  Cox,  244;  Petersen 
V.  Humphrey,  4  Abb.  Pr.  394;  Cox, 
212;  Thynne  v.  Shove,  89  L.  T. 
Jour.  84;  Mayer  v.  Flanagan,  12 
Tex.  Civ.  App.  405;  Sherwood  v. 
Andrews.  5  Am.  L.  Reg.  N.  S.  588; 
Seb.  263. 

57 — Snodgrass  v.  Wells,  11  Mo. 
App.  590. 

58— Estes  v.  Williams,  21  Fed. 
Rep.  189, 


59 — Pepper  v.  Labrot,  8  Fed. 
Rep.  29;  LePage  Co.  v.  Russia 
Cement  Co.,  2  C.  C.  A.  555,  51  Fed. 
Rep.  941;  Jennings  v.  Johnson,  37 
Fed.  Rep.  364;  Frazer  v.  Frazer 
Lubricator  Co.,  121  111.  147,  13  N 
E.  Rep.  639;  McLean  v.  Fleming, 
96  U.  S.  245;  Symonds  v.  Jones 
82  Me.  302.  8  L.  R.  A.  570;  Fil 
kins  v.  Blackman,  13  Blatchf.  440 
Fed.  Case  No.  4786;  Weed  v.  Peter 
son,  12  Abb.  Pr.  N.  S.  178;  Young 
V.  Jones,  3  Hughes,  274,  Fed. 
Case  No.  18,159;  Fulton  v. 
Sellers,  4  Brewst.  42;  Weston  v. 
Ketcham  (1),  39  N.  Y.  54;  Clark 
V.  Ins.  Co.,  7  Mo.  App.  71;  Frank 
V.  Sleeper,  150  Mass.  583,  23  N.  E. 
Rep.  213;  Hoxie  v.  Chaney,  143 
Mass.  592;  Russia  Cement  Co.  v. 
LePage,  147  Mass.  206,  17  N.  E. 
Rep.  304;  Brown  Chemical  Co.  v. 
Meyer,     139     U.    S.   540;    Bulte   v. 

Ingleheart  Bros.,  —  C.  C.  A. ; 

137  Fed.  Rep.  492,  499.  The  fact 
that  a  trademark  includes  the 
name  and  portrait  of  the  first  own- 
er does  not  render  it  unassignable 
to  another.  Richmond  Nervine  Co. 
V.  Richmond,  159  U.  S.  293,  302. 


§  15]  PREFATORY.  25 

this  is  now  the  safer  rule,*'''*  particularly  where  the  trade- 
mark is  a  mark  ol"  special  qualities,  due  to  su- 
perior material,  processes,  care  and  skill  exer- 
cised by  the  originator  thereof,  or  the  mark 
bearing  his  name  "would,  or  at  least  might, 
imply  that  his  personal  work  or  supervision  was  em- 
ployed in  the  manufacture;  and  in  such  cases  it  would  be 
a  fraud  upon  the  public  if  the  trademark  should  be  used 
by  other  persons,  and  for  this  reason  such  a  trademark 
would  be  held  to  be  unassignable.  .  .  .  But,  on  the 
other  hand,  the  usages  of  trade  may  be  such  that  no  such 
inference  would  naturally  be  drawn  from  the  use  of  a 
trademark  which  contains  a  person's  name,  and  that  all 
that  purchasers  would  reasonably  understand  is  that 
goods  bearing  the  trademark  are  of  a  certain  standard, 
kind  or  quality,  or  are  made  in  a  certain  manner,  or  after 
a  certain  formula,  by  persons  who  are  carrying  on  the 
same  business  that  formerly  was  carried  on  by  the  per- 
son whose  name  is  on  the  trademark.  "*^^  In  the  sale  of  a 
business,  then,  the  general  rule  is  that  the  trademarks 
connected  with  the  business  will  pass  to  the  purchaser 
without  being  specified  in  the  bill  of  sale,*^-  and  in  case  of 
a  general  assignment  or  bankruptcy  the  trademarks  also 
pass,  to  inure  to  the  benefit  of  the  creditors.*^-     The  ex- 

60— Manhattan  Med.  Co.  v.  Wood,  W.  R.  599;    Wilmer  v.  Thomas,  74 

108  U.  S.  218;    Horton  Mfg.  Co.  v.  Md.   485;     13  L.  R.  A.  380;     Solis 

Horton  Mfg.  Co.,  18  Fed.  Rep.  816;  Cigar    Co.   v.    Pozo,    16    Colo.    388; 

Alaska    Packers'    Ass'n    v.    Alaska  25  Am.  St.  Rep.  279;    Laughman's 

Imp.   Co.,   60   Fed.  Rep.   103;     Sie-  Appeal,  128  Pa.  1,  18  Atl.  Rep.  415, 

gert   V.    Abbott    (1),    61    Md.    276;  5  L.  R.  A.  599;    Morgan  v.  Rogers, 

Sherwood    v.    Andrews,    5    Am.    L.  19    Fed.     Rep.     596.      Trademarks 

Reg.    N.   S.    588;     Seb.    263;     Car-  "pass  under  a  sale  of  the  'asseto 

michael  v.  Latimer,  11  R.  I.  395;  and     goodwill'     of    the     business, 

Seb.    521;     Pillsbury   v.    Pillsbury-  whether     specially    mentioned     or 

Washburn  Flour  Mills  Co.,  64  Fed.  not."     Holland,     J.,     in     Kronthal 

Rep.  841;    12  C.  C.  A.  432;    People  Waters    v.    Becker,    137    Fed.  Rep. 

V.  Molins,  10  N.  Y.  Supp.  130.  649,  652. 

61 — Charles  Allen,   J.,   in  Hoxie  63 — Hegeman     v.     Hegeman.     S 

V.  Chaney,  143  Mass.  592,  10  N.  E.  Daly,   1;     Rogers    v.     Taintor,     97 

Rep.  713.  Mass.     291;      Warren    v.     Warren 

62— Shipwright  v.  Clements,    19  Thread  Co..   134   Mass.   247;     Hud- 


26  HOPKINS   ON   TRADEMARKS.  [§  15 

ception  to  each  of  these  rules  arises  where  the  trademark 
depends  upon  the  secret  processes  or  individual  skill  of 
its  owner  for  its  value.*^^ 

Trademarks  may,  in  connection  with  the  good-will  of 
the  business  wherewith  they  are  connected,  be  trans- 
mitted by  bequest.*^^  This  naturally  leads  to  the  result 
that  several  persons  may  by  bequest  (as  they  may  upon 
dissolution  of  copartnership)  become  possessed  of  the 
right  to  use  the  same  trademark.  As  where  a  decedent, 
a  watchmaker  using  ''Dent,  London"  as  a  mark  on 
watches  which  he  manufactured  at  three  several  shops  in 
London,  bequeathed  the  business  of  two  of  these  shops 
to  one  person  and  the  third  shop  to  another.  It  appears 
to  have  been  held  here  that  each  legatee  had  a  several 
right  to  the  use  of  the  trademark.^^  The  rights  of  the 
partners  in  the  use  of  the  firm  trademarks  upon  dissolu- 
tion have  been  thus  defined  by  Judge  Hughes: 
"Rights  in  trademark  are  analagous  to  rights  in 
the  good-will  of  a  partnership.  In  the  absence  of  ex- 
press stipulation  at  the  time  of  dissolution,  each  partner 
may  go  on  and  use  the  trademark  of  the  firm. '  '"^    It  is 

son  V.   Osborne,   39  L.   J.   Ch.   79 ;  ests  in  patents,  patent  rights,  copy- 
Cotton  V.  Gillard,  44  L.  J.  Ch.  90;  rights,  and  trademarks." 
Ex  parte  Foss,  2  DeG.  &  J.    230:  64— Re    Swezey,     62     How.     Pr. 
Bury  V.  Bedford,   4   DeG.   J.  &   S.  215. 

352;    Ex   parte   Young,    Seb.     537;  65— McLean  v.  Fleming,  96  U.  S. 

Longman  v.  Tripp,  2  Bos.  &  P.  N.  245;     Huwer   v.    Dannenhoffer,    82 

R.  67;    Hammond  v.  Brunker,  9  R.  N.   Y.    499,   502. 

P.  C.  301;    Cartmell,  142;    Lippiu-  66— Dent   v.   Turpin,    2   J.   &   H. 

cott   V.    Hubbard,     28     Pitts.   L.   J.  139;     30  L.  J.  Ch  495;     7  Jur.  N. 

303;    Burkhardt  v.  Buckhardt  Co.,  S.  673;    4  L.  T.  N.  S.  673;    9  W.  R. 

4   Ohio   N.   P.   358;     Batchellor  v.  548.     Mr.  Cox  observes,  "This  case 

Ttiomson,  86  Fed.  Rep.,  630;    Sar-  is  to  be  taken  as  of  an  exceptional 

razin  v.  W.  R.  Irby  Cigar  Co.,  35  character;    it  is  not  in  accord  with 

C.  C.  A.  496,  93  Fed.  Rep.  624,  626.  settled  principles."     Cox,    Manual, 

The     Bankruptcy     Act     of     1898,  196. 

§    70a,     provides    that    the    trus-  67— Young  v.    Jones,    Fed.    Case 

tee      in      bankruptcy      shall      be  No.  18,159,  3  Hughes,  274;  Price  & 

vested      by      operation      of      law  Steuart,    150.     And    to    the     same 

with     the     title     of     the     bank-  effect,  see  Caswell  v.  Hazard,  121 

rupt,   as   of  the   date   he   was   ad-  N.  Y.  484,  24  N.  E.  Rep.  707;  Haz- 

judged   a  bankrupt,   to   all   "inter-  ard  v.  Caswell    (2),  93  N.  Y.  259- 


§  15]  PREFATORY.  27 

clear,  however,  that  where  a  mark  is  a  common  design 
for  the  purpose  of  a  connnon  adventure  used  by  several 
independent  dealers  or  manufacturers  in  a  joint  enter- 
prise, a  mark  belonging  to  neither  individually,  but  rep- 
resenting the  enterprise  of  all  concerned,  for  the  pur- 
poses of  their  joint  adventure,  the  trademark  can  be  used 
only  so  long  as  all  the  parties  remain  interested  in  the 
enterprise;  when  it  terminates,  the  function  and  life  of 
the  trademark  also  tenninate."^  If  the  business  and 
good-will  of  a  partnership  are  sold  upon  dissolution  the 
trademark  goes  with  the  other  assets.''''  Another  ques- 
tion is  presented  where  one  partner  retires  from  the  firm. 
It  the  retiring  partner  re-engages  in  business  and  con- 
tinues to  use  the  trademark,  it  has  been  held  that  that 
fact,  even  if  the  mark  is  applied  by  him  to  a  spurious 
article,  is  evidence  of  his  intention  to  retain  his  interest 

262;     Huwer  v.   Dannenhoffer,   82  use  of  the  trademark,  and  perhaps 

N.  Y.  499,  502;  Banks  v.  Gibson,  34  each   of  them  will   be  entitled    to 

Beav.  566;    34  L.  J.  Ch.  591;    6  N.  such  exclusive  use  as  to  all  other 

R.  373;   13  W.  R.  1012;   11  Jur.  N.  persons  except  their  associates  in 

S.   680;    Seb.    248;    Condy   v.     Mil-  ownersiiip."     New     York     Cement 

chell,  37  L.  T.  N.  S.  268;   37  L.  T.  Co.  v.  Coplay  Cement  Co.,  45  Fed. 

N.    S.    766;     26    W.    R.    269;     Seb.  Rep.  212. 

561;  Taylor  v.  Bothin,  Fed.  Case  68— Re  Jones  53  L.  T.  1,  Cart- 
No.  13,780,  5  Sawy.  584;  Wright  mell,  189;  Robinson  v.  Finlay,  and 
V.  Simpson,  15  Off.  Gaz.  968;  Price  Ward  v.  Robinson,  L.  R.  9  Ch.  D. 
&  Steuart,  165.  In  this  connection  487;  39  L.  T.  398;  27  W.  R.  294; 
Mr.  Justice  Bradley  said:  "In  Cartmell,  295.  These  cases  arose 
holding  that  it  is  necessary  to  the  between  merchants  in  Manchester 
validity  of  a  trademark  that  the  and  corresponding  houses  in  Man- 
claimant  of  it  must  be  entitled  to  ilia  and  Rangoon.  The  trademarks 
an  exclusive  right  to  it,  or  prop-  were  composite  marks,  containing 
erty  in  it,  we  do  not  mean  to  say  crests,  names  of  the  individuals 
that  it  may  not  belong  to  more  written  in  Chinese  characters, 
than  one  person,  to  be  enjoyed  coats  of  arms,  and  other  personal 
jointly  or  severally.  Copartners,  ijidicia  of  the  parties  interested, 
upon  a  dissolution  of  partnership,  69 — Armistead  v.  Blackwell,  1 
may  stipulate  that  each  of  them  Off.  Gaz.  603;  Seb.  399;  Rogers  v. 
may  use  the  trademarks  of  the  Taintor,  97  Mass.  291;  Seb.  283; 
firm,  and  there  may  be  many  other  Bradbury  v.  Dickens,  27  Beav.  53; 
cases  of  joint  and  several  owner-  28  L.  J.  Ch.  667;  33  L.  T.  54;  Seb. 
ship;  but  such  co-owners  will  to-  173;  Banks  v.  Gibson,  34  Beav. 
gether  be  entitled  to  the  exclusive  566;    11   Jur.   N.    S.   680,   34   L.   J. 


28  HOPKINS   ON   TRADEMARKS.  [§  15 

in  the  trademark^"  If  upon  dissolution  one  partner 
takes  the  whole  business  by  agreement,  the  valuation  of 
the  retiring  partner's  interest  must  include  his  interest 
in  the  trademarks  of  the  partnership,  which  pass  with 
the  good-will.'^ 

Trademarks  upon  the  death  of  their  owner  pass  with 
his  other  jDersonalty  to  his  personal  representatives.'^- 
There  should,  of  course,  be  a  conveyance  of  the  dece- 
dent's title  by  administration;  and  where,  as  in  H oven- 
den  V.  Lloyd,  there  is  no  administration,  and  a  relation 
simply  continues  business  and  uses  the  trademark,  he 
probably  acquires  no  title  to  the  trademark  thereby. 
At  all  events,  in  that  case,  where  the  deceased's  son  so 
used  the  trademark  and  subsequently  sold  his  business 
with  its  good-will  to  a  third  party,  it  was  held  that  the 
son  had  acquired  no  title  capable  of  being  transferred  to 
such  third  party J^  The  supreme  court  of  Pennsylvania, 
however,  has  distinctly  held  that  where  a  man's  sons 
continued  to  use  his  trademark  after  his  death  (there 
having  been  no  evidence  of  administration  upon  his 
estate)  and  subsequently  separated,  each  continuing  in 
business  and  using  the  trademark,  they  were  entitled  to 
an  injunction  against  a  stranger  imitating  that  trade- 
mark, upon  a  bill  in  equity  in  which  they  joined  as  com- 
plainants. The  subject  is  not  as  fully  discussed  by  the 
court  as  it  should  have  been.  The  language  of  Lord 
Cranworth  in  Leather  Cloth  Co.  v.  American  Leather 
Cloth  Co.'^^  is  quoted  in  the  opinion,  as  follows:  ''Diffi- 
culties, however,  may  arise  where  the  trademark  con- 
ch. 591;  13  W.  R.  1012;  6  N.  R.  72— Croft  v.  Day,  7  Beav.  84;  Re 
273.  Farina,  44  L.  T.  N.  S.  99;    Giblett 

70— Wright  v.    Simpson,   15   Off.     v.  Read,  9   Mod.   459. 
Gaz.  968;  Price  &  Steuart,  165.  73— Hovenden  v.  Lloyd,  18  W.  R. 

71— Banks  v.  Gibson,  34  Beav.  1132;  Seb.  337.  There  was  sub- 
566;  11  Jur.  N.  S.  680;  34  L.  J.  stantially  the  same  state  of  facts 
Ch.  591;  13  W.  R.  1012;  6  N.  R.  and  the  same  holding  in  Singleton 
373;  Seb.  248;  Gage  v.  Canada  Pub.  v.  Bolton,  3  Doug.  293;  Cox,  634; 
Co.,  11  Can,  S.  C.  R.  306;  6  Ont.  Seb.  4. 
Rep.  68;  11  Ont.  App.  402.  74—11  H.  L.  C.  523. 


§  15]  PREFATORY.  29 

sists  merely  of  the  name  of  the  manufacturer.  'When  he 
dies,  those  who  succeed  him  (grandchildren  or  man-ied 
daughters,  for  instance),  though  they  may  not  hear  the 
same  name,  yet  ordinarily  continue  to  use  the  original 
name  as  a  trademark,  and  they  would  be  protected 
against  any  infringement  of  the  exclusive  right  to  that 
name.  They  would  be  so  protected,  because  according  to 
the  usage  of  trade  they  would  be  understood  as  meaning 
no  more  by  the  use  of  their  grandfather's  or  father's 
name  than  that  they  were  carrj'ing  on  the  manufacture 
formerly  carried  on  by  him. ' '  In  the  course  of  its  opin- 
ion the  Pennsylvania  court  observes:  "It  was  urged, 
however,  that  conceding  this  sjnmbol  to  have  been  a  valid 
trademark  in  the  hands  of  Jesse  Darlington  (gi'andfather 
of  complainants),  or  even  of  Jared  (his  son),  that  upon 
the  death  of  the  latter  it  ceased  to  be  the  property  of  any 
one,  and  that  its  use  by  several  members  of  the  family  of 
the  latter  destroyed  its  distinctive  features  and  left  it 
open  to  the  public  to  appropriate  it.  We  cannot  assent 
to  this  proposition.""^  It  might  be  suggested  that  in 
cases  of  this  character  (i.  e.,  where  no  administration  is 
had  upon  the  estate  of  a  deceased  owner  of  a  trademark) 
its  use  by  relatives  in  a  similar  business  is  practically  an 
adoption  dc  novo  of  the  mark,  left  open  to  the  world  for 
appropriation  b}^  its  owner's  death. 
Where  the  owner  of  a  trademark  takes  partners  into 

75 — Paxon,  J.,  in  Pratt's  Appeal,  the  business  themselves  or  by  sell- 
117  Pa.  St.  401,  412.  "The  reason  ing  to  one  who  will,  its  chief  ele- 
why  a  trademark  may  pass  'with-  ment  as  an  asset  is  wanting.  But 
out  administration,'  as  suggested  it  seems,  also,  that  cases  may  arise 
by  Paxon,  J.,  in  Pratt's  Appeal,  117  in  which  the  trademark  of  a  de- 
Pa.  St.  401,  seems  to  be  that  a  ceased  testator  or  intestate  is  of 
trademark  can  have  no  value  ex-  value  to  creditors,  or  a  subject  of 
cept  in  connection  with  the  busi-  contention  among  heirs,  when  ad- 
ness  to  which  it  attaches;  and  as  ministration  may  become  neces- 
creditors  are  not  usually  in  condi-  sary."  Woerner,  Administration, 
tion  to  realize  the  value  of  the  635,  note  8. 
trademark,   either  by  carrying  on 


30  HOPKINS   ON   TRADEMARKS.  [§15 

the  business  in  which  it  is  employed,  the  title  to  the 
trademark  ordinarily  is  merged  into  the  partnership 
assetsJ^  The  supreme  court  of  the  United  States  has 
apparently  held  to  the  contrary,'^  but  the  facts  were  that 
the  owner  of  the  mark  owned  the  premises  in  which  the 
business  was  conducted,  and  took  two  of  his  clerks  into 
partnership.  He  did  not  convey  the  realty  to  the  firm, 
and  upon  dissolution  there  was  correspondence  between 
him  and  the  withdrawing  partners  which,  in  the  lan- 
guage of  Mr.  Justice  Field,  "discloses  beyond  question 
their  knowledge  of  the  transfer  and  recognition  of  his 
power  to  make  it;"  refeiTing  to  his  subsequent  sale  of 
his  business  and  his  trademark  to  another.  It  would 
seem  from  this  decision,  then,  that  the  partner  who 
originally  owns  the  mark  may  by  agreement  permit  the 
use  of  the  trademark  by  the  firm  during  its  existence, 
reserving  the  title  to  the  trademark  to  himself  in  the 
event  of  dissolution. 

In  a  recent  case  it  has  been  held  that  "When  a  trade- 
mark or  tradename  is  owned  by  one  who  enters  into  a 
partnership  with  another  for  the  manufacture  of  the 
article  designated,  the  title  of  the  trademark  does  not 
pass  to  the  partnership  except  by  express  agreement.  "^^ 
A  like  ruling  has  been  made  as  to  the  trademark  of  one 
of  the  incorporators  of  a  corporation."^^  In  each  case  the 
title  of  the  mark  is  a  question  of  fact,  and  title  to  per- 
sonalty usually  follows  possession.  Use  by  a  partner- 
ship is  2^ri7na  facie  evidence  of  ownership  by  the  partner- 
ship. 

The  federal  supreme  court  has  held  that  when  a  part- 

76_Weston  v.  Ketcham    (2),  51  264,  70  N.  E.  Rep.  64. 

How.    Pr.    455;    Filkins   v.    Black-  77— Kidd  v.  Johnson,  100  U.   S. 

man,     13    Blatchf.    440,     446,    Fed.  617,  619. 

Case  No.    4,786;     Sohier    v.  John-  78— Kirkpatrick,   J.,   in   Greacen 

son,    111    Mass.     238,     242;     Bury  v.  Bell,  115  Fed.  Rep.  553,  554. 

V.  Bedford,  4  DeG.  J.  &  S.  352-371;  79— Cutter  v.  Gudebrod  Bros.  Co. 

Condy  v.  Mitchell,  37  L.  T.  N.  S.  (2),  61  N.  Y.  Supp.  225. 
268;   Moore  v.  Rawson,  185  Mass. 


§  15]  PREFATORY.  81 

uer  retires  from  a  firm,  assenting  to  or  acquiescing  in 
the  retention  by  tlie  otlier  partners  of  the  old  place  of 
business  and  the  future  conduct  of  the  business  by  them 
under  the  old  name,  the  good-will  (including  the  title  to 
the  firm's  trademarks)  remains  with  the  latter  as  a  mat- 
ter of  course,^® 

It  is  important  to  note,  in  considering  the  assignabil- 
ity of  trademarks,  the  doctrine  first  announced  by  Judge 
Shipman,  that  **Tlie  right  to  use  a  trademark  cannot  be 
so  enjoyed  by  an  assignee  that  he  shall  have  the  right  to 
affix  the  mark  to  goods  differing  in  character  or  species 
from  the  article  to  which  it  was  originally  attached.  * '^^ 
And  where  the  trademark  involved  the  use  of  the  as- 
signor's name,  it  was  said:  ** Where  an  individual  parts 
with  a  right  to  the  use  of  his  own  name  in  any  given 
connection,  the  courts  should  not  extend  the  contract  by 
which  he  does  so  beyond  its  necessary  scope.  It  certainly 
will  not  be  held  that  a  man  has  tied  himself  up  so  as  to 
prevent  the  use  of  his  own  name  any  further  than  the 
clear  terms  of  the  agreement  show  his  intention  to  do 

S0."«" 

One  who  has  assigned  either  his  trademark^^  or  trade- 
name ^^  will  be  enjoined  from  again  using  the  mark  or 
name  himself;  if  he  makes  such  an  assignment  to  a  cor- 
poration with  a  reversion  to  him  if  the  corporation 
ceases  to  exist,  he  cannot  make  a  valid  assignment  of 
the  mark  to  another  during  the  life  of  the  corporation.^^ 

The  assignee  of  a  trademark  does  not,  merely  by  vir- 

80— Menende^  v.  Holt,  128  U.  S.  Medicine  Co.  v.  Thedford  (2),    58 

514.  522.  Fed.  Rep.  347,  349. 

81— Filkins     v.     Blackman,     13  83— Bury  v.  Bedford,  4  DeG.  J. 

Blatchf.      440,      444,      Fed.      Case  &  S.  352;  Burkhardt  v.  Burkhardt 

No.     4,786.     This     rule     is    again  Co.,  4  Ohio  N.  P.  358. 

laid    down    in    Chattanooga    Med-  84 — Churton    v.    Douglas,    John- 

icine    Co.    v.    Thedford     (1),    49  son    (Eng.),   174. 

Fed.    Rep.    949,    952;    Chattanooga  85— Petrolia  Mfg.  Co.  v.  Bell  & 

Medicine  Co.  v.  Thedford    (2),  58  Bogart  Soap  Co.,  97  Fed.  Rep.  781, 

Fed.  Rep.  347.  784. 

82 — Newman,  J.,  in  Chattanooga 


32  HOPKINS   ON   TRADEMARKS.  [  §  15 

tue  of  the  assignment,  obtain  a  riglit  to  enjoin  infringers 
of  tlie  mark.  He  must  show  that  he  has  actually  applied 
it,  commercially,  to  goods  of  the  class  for  which  it  is 
claimed  as  a  trademark.^" 

AVhile,  as  we  have  seen,  a  trademark  is  assignable 
only  in  connection  with  the  good-will  of  the  business  in 
which  it  is  used,  it  does  not  follow  that  both  must  be 
conveyed  by  the  same  instrument  or  at  the  same  time; 
and  under  the  English  Patents,  Trademarks  and  Copy- 
right Act  of  1883  it  has  been  held  that  the  registration 
of  an  assignment  of  a  trademark  need  not  be  contem- 
poraneous with  the  assignment  of  the  goodwill.^^  It  is 
possible  that  the  originator  of  a  manufacturing  business 
and  the  person  who  purchases  that  business  may  each 
thereafter  have  a  right  to  the  limited  use  of  the  trade- 
name and  trademark  used  in  connection  with  that  busi- 
ness.^^  Where  such  a  state  of  facts  arises,  either  the 
vendor  or  purchaser  can  assign  his  right  to  the  use  of  the 
tradename  and  trademark,  and  either  will  be  enjoined 
upon  the  application  of  the  other  from  using  the  words 
"only  genuine"  in  connection  with  the  name  or  mark.^^ 

In  a  case  where  a  trademark  was  used  by  a  manufac- 
turer in  England  and  also  by  a  firm  in  the  United  States 
in  which  he  was  a  partner,  the  use  of  the  trademark 
having  begun  in  both  places  about  the  same  time,  and  it 
having  become  a  distinctive  mark,  identifying  the  article 
manufactured  in  the  United  States,  the  English  manufac- 
turer retired  from  the  American  house.  Upon  his  subse- 
quently attempting  to  use  it  in  a  separate  business  of  the 
same  kind  in  this  country,  it  was  held  that  his  successors 

86 — Walton     v.     Crowley,     Fed.  Belle  Wagon  Works,  82  Wis.  546; 

Case  No.  17,133,  3  Blatchf.  440,  448;  Fish  Bros  Wagon  Co.  v.  Fish  Bros. 

Filkins  v.  Blackman,   13    Blatchf.  Mfg.    Co.,    87    Fed.    Rep.    201;    af- 

440,   445,  Fed.   Case  No.   4786.  firmed,  95  Fed.  Rep.  457,  37  C.  C. 

87_Re  Wellcome,   L.   R.   32  Ch.  A.  146. 

D.  213;  3  R.  P.  C.  76;  55  L.  J.  Ch.  89— Fish    Bros.    Wagon    Co.    v. 

542;    54  L.  T.  493;   34  W.  R.  453;  Fish  Bros.  Mfg.  Co.,  87  Fed.  Rep. 

Cartmell,  342.  203. 

88 — Fish  Bros.  Wagon  Co.  v.  La 


§35]  PREFATORY.  33 

in  the  old  fimi  had,  upon  his  retirement,  succeeded  to  the 
exclusive  right  to  use  the  trademark,  as  part  of  the 
business,  and  he  was  enjoined  from  using  the  mark  in 
his  new  establishment  in  the  United  States.'^*^  This  case 
is  but  a  practical  application  of  the  doctrines  we  have 
just  considered,  to  an  unusual  state  of  facts. 

Whenever  the  alien  owner  of  a  trademark  has  aban- 
doned its  use  in  the  United  States  by  neglecting  to  assert 
his  rights  as  against  infringers  in  this  country-,  the  pub- 
lic has  a  right  to  use  that  mark,  of  which  it  will  not  be 
divested  by  the  operation  of  a  law  subsequently  enacted 
by  the  country  of  which  the  former  owner  is  a  citizen.^^ 
A  trademark  applied  to  mineral  paint  produced  from  a 
deposit  on  a  particular  piece  of  land  will  pass  to  a  pur- 
chaser of  tlie  land  as  an  incident  to  the  realty,'*-  as  will 
a  trademark  applied  to  the  wafer  of  a  particular 
spring,**^  or  the  right  to  use  words  designating  a  partic- 
ular building  rather  than  the  business  conducted  there- 
in,"^ or  the  right  to  use  a  mark  which  has  come  to  desig- 
nate the  product  of  a  mill  or  factory  rather  than  of  the 
proprietor.-"^ 

In  a  case  where  the  plaintiff  had  assigned  the  right  to 
use  his  trademark  to  the  defendant  for  a  terai  of  years, 
for  a  share  of  the  profits  of  defendant's  business,  and 
during  the  term  re-engaged  in  the  use  of  the  mark,  in  an 
action  by  the  plaintiff  upon  the  contract  it  was  hold 
that  the  plaintiff  could  recover  the  profits  due  him  under 
the  contract,  and  the  defendant  was  allowed  damages 
for  the  breach  of  the  contract.  The  validity  of  the 
assignment  appears  not  to  have  been  questioned.^^ 

90— Batchelor   v.   Thompson,    86  93— Hill    v.    Lockwood,    32    Fed; 

Fed.  Rep.  630.  Rep.  389. 

91 — Saxlehner  v.  Eisner  &  Men-  94 — Armstrong  v.  Kleinhaus,  82 

delson  Co.    (2),  91   Fed.  Rep.  536;  Ky.  303. 

Saxlehner  v.  Eisner  &  Mendelson  95 — Atlantic  Milling  Co.  v.  Rob- 
Co.   (3).  179  U.  S.  19,  36.  inson,  20  Fed.  Rep.  217. 

92— Prince  Mfg.   Co.  v.  Prince's  96— Coe  v.   Bradley,   9   Off.  Gaz. 

Metallic  Paint  Co.  15  N.  Y.  Supp.  541,  Fed.   Case  No.  2,941. 
249;   Cox,  Manual,  721. 
3 


34  HOPKINS   ON   TRADEMARKS.  [§16 

There  is  an  exception  to  the  general  inile  that  a  trade- 
mark cannot  be  assigned  save  in  connection  with  a  busi- 
ness; where  the  mark  is  associated  with  the  product  of 
a  secret  process,  the  mark  necessarily  goes  with  an  as- 
signment of  the  process.'-*^  Thus  the  Court  of  Appeals 
of  New  York,  speaking  through  O'Brien,  J.,  has  said, 
**  There  are  doubtless  some  trademarks  that  consist  of 
words  that  identify  an  article  produced  by  some  secret 
23rocess  and  without  the  use  of  which  the  article  could 
not  be  described.  In  other  words  the  name  used  may 
be  inherent  in  the  article  itself  and  is  not  used  as  in  this 
case  to  distinguish  one  cigar  from  another.  The  cele- 
brated cordial,  which  is  in  use  the  world  over,  known 
as  'Chartreuse'  is  a  sample  of  a  trademark,  the  bare 
assignment  of  which  might  confer  upon  the  assignee  the 
right  to  manufacture  and  sell  that  article. '"^^ 

§  16.  Assignability  of  distillery  brands  and  the  like. 
—Trademarks  used  at  a  particular  producing  establish- 
ment uj^on  the  articles  produced  at  the  establishment 
may  be  lawfully  assigned  and  transferred  with  the  estab- 
lishment. Of  such  a  mark  it  has  been  said  that  ''its  sub- 
sequent use  by  the  person  to  whom  the  establishment  is 
transferred  is  considered  as  only  indicating  that  the 
goods  to  which  it  is  affixed  are  manufactured  at  the  same 
place  and  are  of  the  same  character  as  those  to  which  the 
mark  was  attached  by  its  original  designer. '  '^  This  rule 
has  been  applied  to  brands  consisting  in  whole  or  in  part 
of  proper  names.  Thus,  in  the  leading  case,  the  brand 
was  "S.  N.  Pike's  Magnolia  Whiskey, "^  and  in  another 
case  the  brands  were  "J.  G.  Mattingly  &  Sons,  Standard 
Bourbon"  and  "J.  G.  Mattingly  &  Sons,  Pure  Eye."^ 

97— Tuttle  V.  Blow,  176  Mo.  158,  dies  Trading  Co.,  180  N.  Y.  445. 

173;  Falk  V.  American  West  Indies  1 — Mr.  Justice  Field  in  Kidd  v. 

Trading  Co.,  180  N.  Y.  445;   Bald-  Johnson,  100  U.  S.  617. 

win   V.   VonMicheroux,     25    N.    Y.  2— Kidd   v.   Johnson,   100   U.    S. 

Supp.  857,  859.  617. 

98 — Falk  V.  American  West  In-  3 — J.   G.   Mattingly  Co,  v.  Mat- 


§  17]  PREFATORY.  35 

§  17.  Unfair  competition.— In  1877,  the  American 
writer,  Mr.  Charles  E.  Coddington,  in  his  excellent  digest 
of  trademark  cases,  remarked  that  **The  interference 
of  courts  of  equity,  instead  of  being  founded  upon  the 
theory  of  protection  to  the  owner  of  trademarks,  is  now 
supported  mainly  to  prevent  frauds  upon  the  public*  If 
the  use  of  any  words,  numerals  or  symbols  is  adopted 
for  the  purpose  of  defrauding  the  public,  the  courts  will 
interfere  to  protect  the  public  from  such  fraudulent  in- 
tent, even  though  the  person  asking  the  intervention  of 
the  court  may  not  have  the  exclusive  right  to  the  use  of 
these  words,  numerals  or  symbols."^  He  added  that  this 
rule  was  fully  supported  by  four  cases,  two  Englisli  and 
two  American,  which  he  cited."  Since  that  time,  the 
recognition  of  the  doctrine  so  expressed  has  grown 
steadily  and  certainly,  so  that  it  now  demands  treatment 
as  a  specific  branch  of  the  law,  separate,  apart  from,  but 
including  the  narrower  and  strictly  technical  law  of 
trademarks.'^  ''The  tendency  of  the  courts  at  the  pres- 
ent time  seems  to  be  to  restrict  the  scope  of  the  law 
applicable  to  technical  trademarks,  and  to  extend  its 
scope  in  cases  of  unfair  competition."^ 

tingly,  17  Ky.  L.  Rep.  1,  27  S.  W.  L.  J.  Ch.  130;   23  L.  T.  N.  S.  443; 

Rep.    985;    J.   G.    Mattingly   Co.   v.  18  W.  R.  942;  L.  R.  5  H.  L.  508;  42 

Mattingly,    96    Ky.    430,    31    S.    W.  L.  J.  Ch.  130;   27  L.  T.  N.  S.  393; 

Rep.  279.  Seb.  329. 

4 — The  writer  erred  in  ascribing  1872.     Newman    v.    Alvord,     49 

this  as  the  only  reason.     The  pre-  Barb.  588;   35  How.  Pr.  108;    Cox, 

vention         fraud  upon  the  person  404;    51    N.   Y.    189;    10   Am.    Rep. 

whose  goods  are  pirated  is  equally  588;    Seb.  282. 

important  and  cogent.  Humphrey's  1877.     Kinney  v.  Basch,  Seb.  542. 

Specific  Med.  Co.  v.  Wenz,  14  Fed.  7 — "The  law  of  unfair  competi- 

Rep.    250;    Skinner    v.   Oakes,     10  tion  is  well  settled.     It  is  only  the 

Mo.  App.  45.  application  of  that  law  to  individ- 

5 — Coddington,  Digest,  sec.  36.  ual   cases  which    requires    discus- 

6 — 1869.     Lee  v.  Haley,  21  L.  T.  sion."     Lacombe,    J.,     in     Walter 

N.  S.  546;   18  W.  R.  181;   L.  R.  5  Baker  &   Co.   v.   Sanders,   80   Fed. 

Ch.  155;    39  L.  J.  Ch.   284;    22  L.  Rep.  889,  891,  26  C.  C.  A.  220. 

T.  N.  S.  251;   18  W.  R.  242;    Seb.  8— Baker.      J.,      in      Church     & 

325.  Dwight  Co.  v.  Russ,  99  Fed.  Rep. 

1872.    Wotherspoon  v.  Curie,  22  276-278. 
L.  T.  N.  S.  260;   18  W.  R.  562;   42 


36  HOPKINS   ON   TRADEMARKS.  [§  18 

§  18.  Historical.— In  1742,  in  Blanchard  v.  EUl,  a  de- 
cision of  no  authority  and  of  no  particular  use  except  to 
illusti*ate  the  slow  growth  of  the  law  of  trademarks,  Lord 
Hardwicke  observed,  referring  to  Southern  v.  Hoiv:^ 
"It  was  not  the  single  act  of  making  use  of  the  mark 
that  was  sufficient  to  maintain  the  action,  but  doing  it 
with  a  fraudulent  design,  to  put  oif  bad  cloths  by  this 
means,  or  to  draw  away  business  from  the  other 
clothier. "^^  The  chancellor  so  crudely  expressed  (but 
disapprovingly)  the  first  reported  judicial  reference  to 
the  law  of  unfair  competition.  In  1896,  Lord  Chancellor 
Halsbuiy,  addressing  the  House  of  Lords,  said:  ''For 
myself,  I  believe  the  principle  of  the  law  may  be  very 
plainly  stated,  and  that  is,  that  nobody  has  any  right  to 
represent  his  goods  as  the  goods  of  somebody  else."^^ 
This  sentence  is  a  terse  statement  of  the  fundamental 
maxim  of  unfair  competition.  The  English  courts  have 
long  recognized  the  rule,  and  it  may  be  found  repeated  in 
various  phraseology  by  all  the  English  courts  within 
whose  jurisdiction  trademark  and  analogous  cases  have 
come. 

It  is  more  difficult  to  trace  the  growth  of  this  doctrine 
in  the  American  decisions.  Chancellor  Sandford  in  1825, 
in  an  action  concerning  the  right  to  the  name  of  a  peri- 
odical, obser\'-ed,  ''The  injury  for  which  redress  is  given 
.  .  .  results  from  the  imposture  practiced  upon  the 
customers  of  an  existing  establishment,  or  upon  the  pub- 
lic, "^^  so  recognizing  the  rule  which  Mr.  Coddington 
failed  to  recognize. 

Twelve  years  later,  in  Massachusetts,  it  was  said  that 
"Imposition,  falsehood  and  fraud,  on  the  part  of  the  de- 

9 — Southern    v.    How,     Popham.  11 — Reddaway  v.  Banham,  L.  R. 

144;    Cro.    Jac.    471;    2   Rolle,    28;  (1896)   Appeal  Cases,  199-204. 

gel5_  1.  12 — Snowden  v.  Noah,  Hopkins' 

10— Blanchard   v.   Hill,    2    Atk.  Ch.  R.  347;  Cox,  1;  Seb.  41. 
484;   Seb.  2. 


§  18]  PREFATORY.  37 

fendant,  in  passing  off  his  own  medicines  as  those  of  the 
plaintiff,  would  be  a  ground  of  action.  "^^ 

In  1840  Chancellor  Walworth  was  presented  with  an 
application  for  an  injunction  to  restrain  the  use  of  the 
words  ''New  Era"  as  the  name  of  a  newspaper,  the  com- 
plainant being  the  proprietor  of  a  rival  periodical  de- 
nominated ** Democratic  Republican  New  Era."  He  de- 
nied the  application,  and  in  the  course  of  his  opinion 
said:  *'Tlie  allegation  in  the  complainant's  bill  of  com- 
plaint is  that  the  defendant  has  assumed  the  name  of 
the  complainant's  newspaper  for  the  fraudulent  purpose 
of  imposing  upon  the  public,  and  supplanting  him  in  the 
good-will  of  his  established  paper,  by  simulating  the 
name  and  dress  thereof;  with  the  intent  to  cause  it  to  be 
understood,  and  believed  by  the  community,  that  the 
defendant's  newspaper  was  the  same  as  the  complain- 
ant's, and  thereby  to  injure  the  circulation  of  the  latter. 
If  this  were  in  fact  so,  I  should  have  no  difficulty  in  mak- 
ing this  order  absolute.  For  although  the  business  of 
publishing  newspapers  ought,  in  a  free  country,  to  be 
always  open  to  the  most  unlimited  competition,  fraud 
and  deception  certainly  are  not  essential  to  the  most 
perfect  freedom  of  the  press.  ...  As  the  names  of 
party  newspapers,  in  these  days,  have  no  necessarj^  con- 
nection with  the  principles  which  they  advocate,  and  are 
manufactured  as  readily  as  the  new  names  if  not  the  new 
principles  of  political  parties,  there  could  be  very  little 
excuse  for  the  editor  of  a  newspaper  who  should  adopt 
the  precise  name  and  dress  of  an  old  established  paper, 
which  would  be  likely  to  interfere  with  the  good-will  of 
the  latter  by  actually  deceiving  its  patrons.  "^^ 

Not  until  1888  did  the  United  States  supreme  court 
give  distinct  recognition  to  the  law  of  unfair  competi- 


13 — Thomson  v.  Winchester.    19        14 — Bell  v.   Locke,   8  Paige,  75; 
Pick.  214;  Seb.  59.  Cox,  11;   Seb.  65. 


38  HOPKINS  ON  TRADEMARKS.  [§18 

tion,^^  and  three  years  later  Mr.  Chief  Justice  Fuller  an- 
nounced the  doctrine  clearly  and  unequivocally,  in  these 
terms:  ''The  jurisdiction  to  restrain  the  use  of  a  trade- 
mark rests  upon  the  grounds  of  the  plaintiff's  property 
in  it,  and  of  the  defendant's  unlawful  use  thereof.  If 
the  absolute  right  belonged  to  plaintiff,  then,  if  an  in- 
fringement were  clearly  shown,  the  fraudulent  intent 
would  be  inferred,  and,  if  allowed  to  be  rebutted  in  ex- 
emption of  damages,  the  further  violation  of  the  right  of 
property  would  nevertheless  be  restrained.  It  seems, 
however,  to  be  contended  that  plaintiff  was  entitled 
at  least  to  an  injunction,  upon  the  principles  applicable 
to  cases  analogous  to  trademarks;  that  is  to  say,  on  the 
ground  of  fraud  on  the  public  and  on  the  plaintiff,  perpe- 
trated by  defendant  by  intentionally  and  fraudulently 
selling  its  goods  as  those  of  the  plaintiff.  Undoubtedly 
an  unfair  and  fraudulent  competition  against  the  busi- 
ness of  the  plaintiff— conduct  with  the  intent,  on  the 
part  of  the  defendant,  to  avail  itself  of  the  reputation  of 
the  plaintiff  to  palm  off  its  goods  as  plaintiff's— would, 
in  a  proper  case,  constitute  ground  for  relief.  "^^ 

15 — Goodyear       India       Rubber  Perry    v.    Truefit,    6    Beavan,    66; 

Glove   Mfg.   Co.  V.   Goodyear   Rub-  Croft  v.  Day,  7  Beavan,  84. 

ber  Co.,  128  U.  S.  598;   Cox,  Man-  Indeed,  McLean  v.  Fleming  may 

ual,  705.     In  this  case  Mr.  Justice  be  properly  regarded    as    the  first 

Field  said    (128  U.   S.  at  p.  604),  case  in  which  the  federal  supreme 

"The   case   at   bar   cannot   be   sus-  court    made   any   mention    of    the 

tained   as   one   to   restrain   unfair  doctrine.     This  sentence  occurs  in 

trade.     Relief    in     such     cases    is  the  opinion:   "Nor  is  it  necessary, 

granted  only  where  the  defendant,  in  order  to  give  a  right  to  an  in- 

by  his  mark,  signs,   labels,  or   in  junction,  that  a  specific  trademark 

other  ways,  represents  to  the  pub-  should  be  infringed;  but  it  is  sufR- 

lic  that  the  goods  sold  by  him  are  cient  that  there  was  an  attempt  on 

those    manufactured    or    produced  the  part  of  the  respondent  to  palm 

by  the  plaintiff,  thus  palming  off  off  his  goods  as  the  goods  of  the 

his  goods  for  those  of  a  different  complainant."  McLean  v.  Fleming, 

manufacturer,  to  the  injury  of  the  96  U.  S.  245. 

plaintiff."    Citing  McLean  v.  Flem-  16 — Lawrence   Mfg.   Co.   v.   Ten- 

ing,  96  U.  S.  245;  Sawyer  v.  Horn,  nessee  Mfg.  Co.,  138  U.  S.  537;  Cox, 

1    Fed.    Rep.    24,    4    Hughes,    239;  Manual,    720. 


§18] 


PREFATORY. 


39 


With  this  decision  the  doctrine  of  unfair  competition 
may  be  regarded  as  being  finally  established  in  the 
United  States;  and  as  based  not  only  on  fraud  on  the 
public,  but  on  the  plaintiff.^  ^ 


17 — "The  law  relating  to  this 
subject  is  well  understood.  No 
man  has  a  right  to  use  names, 
symbols,  signs  or  marks  which  are 
intended,  or  calculated,  to  repre- 
sent that  his  business  is  that  of 
another.  No  man  should  in  this 
way  be  permitted  to  appropriate 
the  fruits  of  another's  industry,  or 
impose  his  goods  upon  the  public 
by  inducing  it  to  believe  that  they 
are  the  goods  of  some  one  else. 
If  A  presents  his  goods  in  such  a 
way  that  a  customer  who  is  ac- 
quainted with  the  goods  of  B  and 
intends  to  purchase  them  is  in- 
duced to  take  the  goods  of  A  in- 
stead, believing  them  to  be  the 
goods  of  B,  A  is  guilty  of  a  fraud 
which  deceives  the  public  and  in- 
jures his  competitor.  Where  the 
goods  of  a  manufacturer  have  be- 
come popular  not  only  because  of 
their  intrinsic  worth,  but  also  by 
reason  of  the  ingenious,  attractive 
and  persistent  manner  in  which 
they  have  been  advertised,  the 
good-will  thus  created  is  entitled 
to  protection.  The  money  invest- 
ed in  advertising  is  as  much  a  part 
of  the  business  as  if  invested  in 
buildings,  or  machinery,  and  a 
rival  in  business  has  no  more  right 
to  use  the  one  than  the  other, — no 
more  right  to  use  the  machinery 
by  which  the  goods  are  placed  on 
the  market  than  the  machinery 
which  originally  created  them.  No 
one  should  be  permitted  to  step  in 
at  the  eleventh  hour  and  appropri- 
ate    advantages     resulting     from 


years  of  toil  on  the  part  of  anoth- 
er." 

"The  action  is  based  upon  decep- 
tion, unfairness  and  fraud,  and 
when  these  are  established  the 
court  should  not  hesitate  to  act. 
Fraud  should  be  clearly  proved;  it 
should  not  be  inferred  from  re- 
mote and  trivial  similarities.  Ju- 
dicial paternalism  should  be  avoid- 
ed; there  should  be  no  officious 
meddling  by  the  court  with  the  pet- 
ty details  of  trade;  but,  on  the 
other  hand,  its  process  should  be 
promptly  used  to  prevent  an  hon- 
est business  from  being  destroyed 
or  invaded  by  dishonest  means." 
Coxe,  J.,  in  Hilson  Co.  v.  Foster, 
80  Fed.  Rep.  896-897. 

"The  fundamental  rule  is  that 
one  man  has  no  right  to  put  otf 
his  goods  for  sale  as  the  goods  of 
a  rival  trader;  and  he  cannot, 
therefore  (in  the  language  of  Lord 
Langdale  in  the  case  of  Perry  v. 
Truefit,  6  Beavan,  66-73),  'be  al- 
lowed to  use  names,  marks,  letters 
or  other  indicia  by  which  he  may 
induce  purchasers  to  believe  that 
the  goods  which  he  is  selling  are 
the  manufacture  of  another  per- 
son.' "  Lord  Kingsdown  in  Leath- 
er Cloth  Co.  (Ltd.)  v.  American 
Leather  Cloth  Co,  (Ltd.),  11  H. 
L.  C.  358;  followed  in  Johnston  v. 
Orr-Ewing,  7  App.  Cas.  219-229. 

"The  gradual  but  progressive  ju- 
dicial development  of  the  doctrine 
of  unfair  competition  in  trade  has 
shed  lustre  on  that  branch  of  our  ju- 
risprudence as  an  embodiment,  to  a 


40 


HOPKINS   ON   TRADEMARKS, 


[§19 


§  19.  Unfair  competition  distinguished  from  trade- 
mark infringement.— It  can  hardly  be  doubted  that  at 
its  iuception  the  doctrine  of  unfair  competition  was  de- 
vised to  protect  the  public,  rather  than  to  recognize  any 
vested  right  in  the  complainant.  He  had  adopted  a  geo- 
graphical name,  a  generic  term,  or  words  otherwise  puh- 
lici  juris,  to  designate  his  wares.  Perhaps  he  had  no  de- 
vice, symbol  or  mark  whatsoever,  but  relied  upon  the 
shape,  form  or  color  of  his  packages.     He  had,  at  all 


marked   deg^ree,   of   the   principles 
of  high  business  morality,  involv- 
ing  the   nicest   discrimination   be- 
tween  those    things    which    may, 
and  those  which  may  not,  be  done 
in  the  course  of  honorable  rivalry 
in   business.     This  doctrine    rests 
on     the     broad     proposition     that 
equity  will  not  permit  any  one  to 
palm  off  his  goods  on  the  public  aa 
those   of   another.     The     law     of 
trademarks  is  only  one  branch  of 
the  doctrine.     But  while  the  law 
of  trademarks  is  but  part  of  the 
law  of  unfair  competition  in  trade, 
yet  when  the   two  are  viewed   in 
contradistinction  to  each  other  an 
essential    difference   is   to    be    ob- 
served. The  infringement  of  trade- 
marks is  the  violation  by  one  per- 
son  of  an   exclusive  right  of  an- 
other person  to  the  use  of  a  word, 
mark  or  symbol.     Unfair  competi- 
tion   in    trade,    as    distinguished 
from  infringement  of  trademarks, 
does  not  involve  the  violation  of 
any  exclusive  right  to  the  use  of 
a    word,    mark   or   symbol.       The 
word  may  be  purely  generic  or  de- 
scriptive, and  the  mark  or  symbol 
indicative  only  of  style,  size,  shape 
or   quality,   and   as   such   open   to 
public  use  'like  the   adjectives  of 
the   language,'   yet   there    may   be 
unfair  competition  in  trade  by  an 


improper  use  of  such  word,  mark 
or    symbol.     Two    rivals    in    busi- 
ness competing  with  each  other  in 
the  same  line  of  goods  may  have 
an   equal    right   to   use   the   same 
words,  marks  or  symbols  on  simi- 
lar  articles   produced   or  sold    by 
them     respectively,    yet    if     such 
words,    marks    or    symbols    were 
used   by   one   of   them   before   the 
other   and    by     association     have 
come  to  indicate  to  the  public  that 
the   goods   to   which   they  are   ap- 
plied are  of  the  production  of  the 
former,  the  latter  will  not  be  per- 
mitted, with  intent  to  mislead  the 
public,  to  use  such  words,  marks 
or  symbols  in  such  a  manner,  by 
trade  dress  or  otherwise,  as  to  de- 
ceive or  be  capable    of    deceiving 
the  public  as  to  the  origin,  manu- 
facture or  ownership  of  the  arti- 
cles to  which  they  are  applied;  and 
the  latter  may  be  required,  when 
using  such  words,  marks  or  sym 
bols,   to   place   on   articles   of   his 
own  production  or  the  packages  in 
which  they  are  usually  sold  some- 
thing clearly  denoting  the  origin, 
manufacture  or  ownership  of  such 
articles,    or  negativing    any    idea 
that   they  were   produced   or   sold 
by  the  former."     Bradford,  J.,  in. 
Dennison  Mfg.  Co.  v.  Thomas  Mfg. 
Co.,  94  Fed.  Rep.   651-659. 


19]  PREFATORY.  41 

events,  none  of  those  methods  of  distinguishing  his  goods 
from  those  of  other  merchants  which  the  law  recognizes 
as  a  Tight  of  property  and  denominates  "trademark." 
Yet  his  goods  had  a  fixed  quality  and  were  sought  for  by 
the  public.  When  his  competitor  endeavored  to  palm  off 
other  goods  as  his  upon  the  public,  the  chancellor  would 
say  as  Lord  Langdale  said;  "My  decision  does  not  de- 
pend on  any  peculiar  or  exclusive  right  the  plaintiffs 
have  to  use  the  name  of  Day  &  Martin,  but  upon  the  fact 
of  the  defendant  using  those  names  in  connection  with 
certain  circumstances,  and  in  a  manner  calculated  to 
mislead  the  public,  and  to  enable  the  defendant  to  obtain, 
at  the  expense  of  Day's  estate,  a  benefit  for  himself,  to 
which  he  is  not  in  fair  and  honest  dealing  entitled."^ 

The  true  theory  of  unfair  competition  has  not  always 
been  as  clearly  stated  by  the  courts  as  it  should  be.  One 
line  of  decisions  bases  this  doctrine  and  the  right  to  in- 
junctive relief  upon  the  protection  of  the  public  from 
fraud.  On  the  other  hand.  Judge  Thayer  has  stated  that 
relief  is  granted  "To  restrain  the  defendants  from  per- 
petrating a  fraud  which  injures  the  complainant's  busi- 
ness, and  occasions  him  a  pecuniary  loss."^ 

It  is  yery  clear  that  equity  interv^enes  in  the  protection 
from  fraud  of  both  the  complainant  whose  business  is  or 
may  be  injured  by  the  unfair  and  fraudulent  competi- 
tion, and  the  public  who  are  the  consumers  of  his  mer- 
chandise.^ 

In  a  sense  it  is  not  exact  to  separate  the  doctrines  of 
trademark  infringement  and  unfair  competition.^  The 
underlying  doctrine  is  the  same— the  control  of  fraud, 
great  or  petty,  by  the  intervention  of  equity;    and  yet, 

1 — Croft  V.   Day,   7    Beav.    84;  the  same  effect  see  Pierce  v.  Guit- 

Seb.  76.  tard,  68  Cal.  68-71. 

2 — Carson  v.  Ury.  39  Fed.  Rep.  3 — Lawrence    Mfg.    Co.    v.     Ten- 

777;    Cox,  Manual,   709;    following  nessee  Mfg.  Co.,  138  U.  S.  537. 

Goodyear  India  Rubber  Glove  Mfg.  4— See  note  to  Scheuer  v.  Muller, 

Co.  V.  Goodyear  Rubber  Co..  128  U.  20  C.  C.  A.  161. 
S.  598;  Cox,  Manual,  705.    And  to 


42  HOPKINS   ON   TRADEMARKS.  [§  19 

without  a  clear  understanding  of  the  doctrines  of  unfair 
competition,  it  is  impossible  to  read  intelligently  the 
tradename  cases  which  have  so  long  been  treated  either 
as  being  ''trademark"  cases,  or  cases  "analogous  to" 
trademark  cases.  We  have  discussed  elsewhere  the  use 
of  proper  names  as  trademarks,  and  from  an  examina- 
tion of  the  cases  the  careful  student  will  conclude  that 
proper  names  are  not  trademarks,  and  that  there  should 
not  be  such  a  thing  as  a  technical  tradename.  A  name 
which  is  not  a  trademark  is  not  entitled  to  protection  as 
a  trademark.^  It  is  only  entitled  to  protection  when  it 
is  fraudulently  used  by  another.  Thus,  in  the  case  of 
"Dent,  London,"^  which  we  have  before  referred  to, 
Dent  is  a  proper  name  and  London  a  geographical  word. 
They  are  entitled  to  protection  against  fraudulent  use, 
but  only  for  the  same  reasons  and  in  the  same  sense  that 
the  size,  shape,  color  and  design  of  labels  or  packages  are 
entitled  to  protection  against  such  fraudulent  use.  This 
is  true  of  many  cases  which  have  been  decided  by  the 
courts  as  trademark  cases. 

The  fact  is  that  there  has  always  existed  the  willing- 
ness of  equity  to  keep  the  zeal  of  competing  traders 
within  the  bounds  of  fairness.'^    In  the  very  early  case 

5 — "After  a  careful  considera-  fraud  so  perpetrated  being  a  legiti- 
tion  of  the  various  cases  bearing  mate  ground  for  equitable  interfer- 
on the  subject,  the  conclusion  was  ence,  and  the  practical  basis  of  it. 
reached  in  Draper  v.  Skerrett,  116  It  is  by  this  standard  that  the 
Fed.  Rep.  206,  that,  to  justify  a  complainant's  right  to  relief  in 
court  of  equity  in  interfering  in  an  the  present  instance  must  be 
alleged  case  of  unfair  competition,  judged.  Stevens  Linen  Works  v. 
there  must  be  something  more  Don  &  Co.,  121  Fed.  Rep.  171;  Al- 
than  the  mere  duplication  by  the  len  B.  Wrisley  Co.  v.  Iowa  Soap 
one  party  of  the  other's  trade-  Co.,  122  Fed.  Rep.  796,  59  C.  C.  A. 
name,  and  that  this  was  to  be  54."  Archbald,  J.,  in  Heide  v.  Wal- 
found  in  the  deceptive  use  of  imi-  lace  &  Co.,  129  Fed.  Rep.  649,  650: 
tative  methods  of  display,  or  other  Affirmed  (C.  C.  A.),  135  Fed.  Rep. 
device  by  which  the  public  are  led  346. 

into   buying  the  infringer's  goods  6 — Dent  v.  Turpin,  30  L.  J.  Ch. 

where  they  intended  to  buy  those  495;   Seb.  196;  Ante,  p.  26. 

of     the     original     producer;     the  7 — This  branch  of  the  law  is  a 


§  19]  PREFATORY.  43 

of  Singleton  v.  Bolton,  where  both  parties  made  and 
sold  a  compound  which  they  styled  "Dr.  Johnson's 
Yellow  Ointment,"  Lord  Mansfield  said:  "If  the  defend- 
ant had  sold  a  medicine  of  his  own  under  the  plaintiff's 
name  or  mark,  that  would  be  a  fraud  for  which  an  action 
would  lie.  But  here  both  the  plaintiff  and  defendant 
use  the  name  of  the  original  Inventor,  and  no  evidence 
was  given  of  the  defendant  having  sold  it  as  if  prepared 
by  the  plaintiff. "«  So  that  even  at  the  early  date  of  the 
rendition  of  that  opinion  (1783)  the  remedy  for  unfair 
competition  would  have  been  applied  upon  a  proper  state 
of  facts;  i.  e.,  ii  the  defendant  had  sold  his  goods  as  the 
goods  of  the  plaintiff. 

In  1810  Lord  Eldou  said:  "There  can  be  no  doubt  that 
this  court  would  interpose  against  that  sort  of  fraud 
which  has  been  attempted  by  setting  up  the  same  trade 
in  the  same  place,  under  the  same  sign  or  name,  the 
party  giving  himself  out  as  the  same  person."^  It  was 
by  analogous  reasoning  that  the  same  learned  judge,  six 
years  later,  enjoined  the  piracy  of  Lord  Byron's  name, 
applied  to  poems  not  of  his  composition.^*^ 

In  1836  Lord  Langdale  enjoined  a  defendant  from 
using  omnibuses  painted  like  the  plaintiff's,  and  driven 
and  managed  by  servants  dressed  in  livery  like  that  of 
the  plaintiff's  serv^ants.^^ 

So  that  the  doctrine  was  old  when  Mr.  Justice  Clifford 
said  from  the  bench  of  the  federal  supreme  court, ' '  Nor  is 
it  necessary,  in  order  to  give  a  right  to  an  injunction, 

most  interesting  illustration  of  the  Boker,  86  Fed.  Rep.  765-768. 

unlimited  adaptability  of  equity  to  8 — Singleton  v.  Bolton,  3  Doug. 

cope   with   fraud   in    every    form.  293;  Cox,  624;   Seb.  4. 

Judge  Townsend  has  accurately  ob-  9 — Cruttwell  v.  Lye,  17  Ves.  335: 

served    that    "A    court    of     equity  1  Rose,  123;  Seb.  17. 

keeps  pace  with  the  rapid  strides  10 — Lord    Byron   v.    Johnston.    2 

of  the  sharp  competitors    for  the  Mer.  29;   Seb.  23. 

prize  of  public  favor,  and  insists  11 — Knott   v.   Morgan,    2    Keen. 

that  it  shall  be  won  only  by  fair  213;    Seb.   57. 

trade."   R.  Heinisch's  Sons  Co.  v. 


44  HOPKINS   ON   TRADEMARKS.  [§  19 

that  a  specific  trademark  should  be  infringed;  but  it  is 
sufficient  that  the  court  is  satisfied  that  there  was  an 
attempt  on  the  part  of  the  respondent  to  palm  off  his 
goods  as  the  goods  of  the  complainant.  "^^ 

The  whole  question  of  fairness  in  trade  is  peculiarly 
■within  the  province  of  equitable  jurisdiction;  trademark 
infringement  is  but  one  form  of  unfair  competition.  Un- 
fair competition  is  the  equivalent  term  for  the  ''passing 
off"  of  the  English^ ^  and  the  "concurrence  deloyale"  of 
the  French  decisions.^  ^ 

It  must  be  borne  in  mind,  however,  that  there  is  this 
practical  distinction  between  the  issues  in  cases  of  tech- 
nical trademark  infringement  and  cases  of  unfair  com- 
petition where  no  technical  trademark  is  involved;  the 
court  is  to  be  guided  to  its  conclusions  not  by  reference 
to  any  arbitrarj^,  fanciful  and  distinctive  device  to  which 
the  plaintiff  has  a  property  right.  But  it  is  for  him  to 
determine,  in  the  light  of  all  the  facts,  whether  or  not  an 
unfair  competition  has  been  instituted  by  the  respond- 
ent. Judge  Kirkpatrick,  in  referring  to  this  question, 
has  said : ' '  Recognizing  the  principle,  I  am  of  the  opinion 
that  the  similarity  (of  the  competing  articles)  which  will 
warrant  the  interference  of  the  court  must  be  determined 
by  the  circumstance  of  each  case."^^  ^Y\ule  fraud  is  pre- 
sumed from  the  wrongful  use  of  a  trademark  it  must  be 
proven,  directly  or  by  inference,  in  all  cases  of  unfair 
competition  which  do  not  involve  a  technical  trade- 
mark.^*^ 

12 — McLean  v.  Fleming,  96  U.  S.  deceitful   representation    or    perti- 

245.  dious   dealing  must  be   made   out 

13_L,ever   Bros.    (Ltd.)    v.  Bed-  or   be   clearly   inferable   from   the 

ingfield,  80  L,  T.  100.  circumstances."     Mr.  Chief  Justice 

14— Pouillet,    Marques    de    Fab-  Fuller,   in  Lawrence  Mfg.    Co.    v. 

rique  et  de  la  Concurrence  Deloy-  Tennessee  Mfg.  Co.,  138  U.  S.  537- 

ale  (4th  ed.),  sees.  459  et  seq.  551.  To  the  same  effect  see  Scriven 

15— Kroppf    V.    Furst,    94    Fed.  v.  North,  C.  C.  A.,  134  Fed.   Rep. 

Rep.  150.  366,   affirming,   with    modification, 

16— Church  &  Dwight  Co.  v.  Scriven  v.  North,  124  Fed.  Rep.  894. 
Russ,  99  Fed.  Rep.  276-279.     "The 


§  19]  PREFATORY.  45 


ib. 


But  it  is  true  of  both  classes  of  cases  that  where  the 
defendant's  conduct  is  calculated  to  mislead,  "it  is  not 
essential  that  any  particular  person  should  have  been  ^C 
actually  misled,'"'^  nor  is  it  necessary  to  prove  that  the 
defendant's  goods  have  actually  been  sold  as  the  plain- 
tiff's.18 

As  we  have  noted,  the  policy  of  the  law  is  to  encourage 
legitimate  competition.     Thus  it  has  been  held  that  a       -^ 
manufacturer  under  a  patent  cannot  complain    of    the         C. 
competition  of  a  former  employee  who  has  patented  an 
invention  in  the  same  art  and  is  manufacturing  under 
his  patent.^^ 

This  rule  that  fraud  must  be  proven  in  cases  of  unfair 
competition  is  exemplified  by  reference  to  the  cases  cited 
in  the  foot-note,  where  such  comparisons  have  been  made        -^ 
by  the  courts,  resulting  in  a  finding  that  the  competition 
of  the  respondent  was  fair,-^  and  others  where  the  facts     '    -< 
have  led  the  court  to  the  contrary  conclusion.^^  -^ 

With  the  exception  of  this  feature,  the  same  general         ^ 
rules  of  law  and  procedure  prevail  in  this  class  of  cases 

17 — Dallas,  J.,  in  Bickmore  Gall  Investor  Pub.  Co.  v.  Dobinson,  82 

Cure  Co.  v.  Karns,  134  Fed.  Rep.  Fed.  Rep.  56;   C.  F.  Simmons  Med.l      ^ 

833,  835,  C.  C.  A.         :   and  to  Co.  v.  Simmons,  81  Fed.  Rep.  162; r     A 

the   same   effect    see     Scheuer     v.  La       Republique       Francaise        v. 

Muller,  74  Fed.  Rep.  225,  20  C.  C.  Schultz,    94    Fed.    Rep.    500;    Vita- 

A.    161;    Swift  &   Co.   v.   Brenner,  scope  Co.  v.  United  States  Phono- 

125  Fed.  Rep.  826.  graph  Co.,  83  Fed.  Rep.  30;  Brown 

18— Devlin  v.  McLeod,  135  Fed.  v.  Doscher,  147  N.  Y.  647;   Mumm 

Rep.   164,  166.  v.   Kirk,   40   Fed.   Rep.   589;    Jaros 

19 — American    Coat    Pad    Co.    v.  Hygienic  Underwear  Co.  v.  Simons, 

Phoenix   Pad    Co.,    113    Fed.    Rep.  49  Fed.  Rep.  276. 
629.  51  C.  C.  A.  339.  21— Draper  v.   Skerrett,  94   Fed. 

20 — Kroppf    V.    Furst,    94    Fed.  Rep.  912;  Anheuser-Busch  Brewing 

Rep.  150;   Putnam  Nail  Co.  v.  Au-  Ass'n  v.  Fred  Miller  Brewing  Co., 

sable  Horsenail  Co.,  53  Fed.  Rep.  87  Fed.  Rep.  864;  Block  v.  Stand- 

390;    Sterling   Remedy   Co.   v.   Eu-  ard    Distilling    Co.,    95    Fed.    Rep. 

reka  Mfg.  Co.,  70  Fed.  Rep.  704;  N.  978;    Allegretti    Chocolate    Cream 

K.  Fairbank  Co.  v.  Luckel,  King  &  Co.   v.   Keller,   85   Fed.   Rep.    643; 

Cake  Soap  Co.,  88  Fed.  Rep.  694;  City  of  Carlsbad    v.    Tibbetts,    51 

Klotz  V.  Hecht,  73  Fed.  Rep.  822;  Fed.  Rep.  852. 


^ 


I 


46  HOPKINS   ON  TRADEMARKS.  [§  20 

as  obtain  in  proceedings  to  restrain  trademark  infringe- 
ment. Tims,  an  injunction  to  restrain  an  unfair  compe- 
tition has  been  expressly  denied  upon  the  ground  that 
the  complainant  was  guiltj^  of  laches  and  acquiescence.^- 

Federal  jurisdiction  in  cases  of  unfair  competition 
must  of  course  be  predicated  upon  the  general  rules 
fixing  the  jurisdiction  of  the  federal  courts,  so  that  those 
courts  cannot  entertain  such  an  action  arising  between 
citizens  of  the  same  state. ^" 

§  20.  Trade  slander  and  libel.— The  question  whether 
equity  will  enjoin  competing  traders  from  publishing 
libelous  or  slanderous  matter  concerning  their  competi- 
tors' business  has  been  frequently  presented  to  the 
courts  In  an  early  case  Lord  Eldon  said :  ' '  The  publica- 
tion of  a  libel  is  a  crime,  and  I  have  no  jurisdiction  to 
prevent  the  commission  of  crimes,  except,  of  course,  such 
cases  as  belong  to  the  protection  of  infants,  where  a  deal- 
ing with  an  infant  may  amount  to  a  crime,— an  exception 
arising  from  that  peculiar  jurisdiction  of  this  court.  "^* 
How  far  this  doctrine— which  extended  to  all  forms  of 
libel— has  been  modified  by  the  federal  courts  of  the 
United  States  is  an  involved  question,  the  discussion  of 
which  would  not  be  relevant  in  this  book. 

But  at  an  early  date  Lord  Cottenham,  in  refusing  to 

22 — La  Republique  Francaise  v.  statement  disparaging    the    plain- 

Schultz,  94  Fed.  Rep.   500,  501.  tiff's  literary  worlf,  Seely  v.  Fish- 

23— Illinois  \vatch  Case  Co.  v.  er,  11  Sim.  581;  10  L.  J.  Ch.  N.  S. 
Elgin  Nat.  Watch  Co.,  94  Fed.  Rep.  274.  And  see  Clark  v.  Freeman, 
667-672.  And  see  Air-Brush  Mfg.  11  Beavan,  112;  Fleming  v.  New- 
Co.  V.  Thayer,  84  Fed.  Rep.  640.  ton,  L.  R.  1  H.  L.  C.  363;  Bullock 

24— Gee  v.  Pritchard,  2  Swanst.  v.  Chapman,  2  DeG.    &  Sm.    211; 

402.     To  the  same  effect  see    (re-  Browne     v.     Freeman     (2),     Cox, 

fusing  an  injunction    against    the  Manual,   424;      Prudential     Assur- 

exhibtion  of  a  painting  falsely  pur-  ance  Co.  v.  Knott,  L.  R.  10  Ch.  D. 

porting  to  be  a  copy  of  a  picture  142;  Fisher  &  Co.  v.  The  Apollin- 

by  the  plaintiff)  Martin  v.  Wright,  aris  Co.,  L.  R.  10  Ch.  D.  297-299; 

6  Sim.  297;  refusing  to  enjoin  a  Ward  v.  Drat,  Cox,  Manual,  607. 
publication    by    defendant    of     a 


I 


§  20]  PREFATORY.  47 

enjoin  libelous  statements  uttered  of  the  plaintiff's 
literary  work,  said  that  the  proper  remedy  lay  in  an 
action  at  law.^'^  And  the  English  courts  have  subse- 
quently held  that  where  matter  has  been  held  libelous 
in  an  action  at  law,  the  repetition  of  the  libel  would  be 
enjoined  in  equity.-'*  In  one  case  where  the  court  refused 
to  enjoin  a  defendant  from  circulating  an  advertisement 
among  the  plaintiff's  customers  which  charged  the 
plaintiff  with  infringing  his  trademarks,  the  court  in- 
timated that  the  injunction  might  have  been  granted  if 
malice  had  been  shown.-^  It  may  now  be  regarded,  how- 
ever, as  the  settled  law  in  England  that  "the  court  will 
interfere  by  injunction  where  statements  are  made  with 
reference  to  the  infringement  of  a  patent,  or  the  invasion 
of  a  trademark  and  the  lilvc,  if  it  is  proved  to  the  satis- 
faction of  the  court  that  these  statements  are  untrue."-^ 
The  same  doctrine  would  seem  to  obtain  in  this  coun- 
try. It  is  libelous  to  publish  of  a  dealer  in  school  books 
that  he  deals  in  ** antiquated  books"  and  books  which 
are  "disgraceful  trash."-''  And  it  has  been  held  libelous 
per  se  to  publish  of  another  dealer  of  the  same  name 
(Davey)  "that  an  unscrupulous  grocer  of  the  same  name, 
in  the  immediate  vicinity,  advertises  *  Davey 's  teas  and 
coffees,'  with  a  view  to  deceive  the  public,  and  may  sell 
an  inferior  article."^*'  Judge  Lacombe  has  laid  down 
the  broad  proposition  that  "every  legal  occupation  from 
which  pecuniary  benefit  may  be  derived  creates  such 
special  susceptibility  to  injury  by  language  charging  un- 

25 — Seely  v.  Fisher,  11  Sim.  581;  Liebig's  Extract  of  Meat  Co.,  45  L. 

10  L.  J.  Ch.  N.  S.  274.  T.  N.  S.  757-758;   and  to  the  same 

26 — Saxby   v.    Easterbrook.    Cox,  effect,  Halsey  v.  Brotherhood,  45  L. 

Manual,  606;   Hinrichs  v.  Berndes,  T.  N.  S.  640;    Empire  Typesetting 

Cox,   Manual,   594;    Thorley's   Cat-  Machine  Co.  v.  Linotype  Co.,  79  L. 

tie  Food  Co.  V.  Massam,  L.  R.  46  L.  T.  N.  S.   8. 
J.  Ch.  713.  29 — American  Book  Co.  v.  Gates, 

27— Colley  v.  Hart,  7  R.    P.    C.  85  Fed.  Rep.  729-734. 
101.  30— Davey  v.   Davey,  50    N.    Y. 

28 — Chitty,    J.,    in    Anderson    v.  Supp.  161. 


48  HOPKINS   ON   TRADEMARKS.  [§  20 

fitness  or  improper  conduct  of  such  occupation  that  such 
language  is  actionable,  without  proof  of  special  dam- 
ggg  M31  j^  ^  ^]jg  necessary  corollary  of  this  rule  that  a 
disparaging  statement  concerning  the  goods  sold  by  an- 
other, whether  under  a  trademark  or  not,  must  be  of  a 
character  to  charge  him  with  business  incapacity  or  im- 
proper conduct  of  his  business  before  it  can  come  within 
the  class  of  matter  that  is  slanderous  or  libelous  per  se. 
For  if  the  words  used  apply  to  the  plaintiff's  merchan- 
dise in  such  a  manner  as  to  constitute  an  imputation  of 
his  improper  conduct  in  or  want  of  capacity  for  his  busi- 
ness, they  will  be  libelous  or  slanderous  per  seP 

The  truth  is  always  a  defense  in  actions  of  this  charac- 
ter. Thus  where  the  plaintiff  had  bought  the  goods  in 
question  from  the  defendant  and  advertised  them  for 
sale,  the  publication  of  an  advertisement  by  the  defend- 
ant that  read  as  follows:  '*An  opinion  of  Shawknit 
hose  should  not  be  formed  from  the  navy  blue  stockings 
advertised  as  first  quality  by  (plaintiff),  since  we  sold 
(plaintiff)  some  lots  which  were  damaged  in  the  dye- 
house,"  was  held  not  libelous,  in  the  absence  of  a  show- 
ing of  its  untruth.^^  And  a  wide  latitude  is  allowed  in 
criticism  of  chattels  where  the  facts  are  not  misstated. 
So  it  is  not  libelous  to  attack  the  theories  advanced  in 
a  book  even  with  sarcasm  and  ridicule,  if  there  is  no  mis- 
representation of  what  is  set  forth  in  the  book;^^  and  a 
criticism  of  one  of  the  pictures  of  an  artist  stating  that 
it  is  not  good  of  its  kind  is  not  libelous,  where  it  does 
not  attack  him  in  his  professional  character  generally.^^ 

31 — Ohio    &   Miss.     Ry.     Co.     v.  v.   Mason   (Oregon),  38  Pac.   Rep. 

Press  Pub.  Co..  48  Fed.  Rep.  206.  130. 

32 — So  where  in  a  criminal  pros-  33 — Boynton    v.  Shaw    Stocking 

ecution  under  the  Oregon  Code  the  Co.,  146  Mass.  219;   15  N.  E.  Rep. 

words  applied   to  the  property  of  507. 

the  prosecuting  witness  in  such  a  34 — Dowling  v.  Livingstone,  108 

manner  as  to  expose  him  to  hatred,  Mich.  321;   66  N.  W.  Rep.  225. 

contempt  or    ridicule,    they    were  35 — Battersby  v.  Collier,  54  N.  Y. 

held  to  be  a  libel  upon  him.    State  Supp.  6%Z. 


§  21]  PREFATORY.  49 

So,  it  has  been  held  in  England  that  no  action  will  lie 
against  a  defendant  trader  for  stating  falsely  and  mali- 
ciously that  his  goods  are  superior  to  those  of  the  plain- 
tiff, even  though  the  plaintiff  suffers  special  damage 
therefrom,^"  and  no  false  statement  directly  disparaging 
the  plaintiff's  goods  is  actionable  in  the  absence  of  proof 
of  special  damage."^ 

Where  an  alleged  libel  consisted  of  a  charge  that  the 
plaintiff  had  no  right  to  use  a  certain  trademark,  it  was 
held  to  be  a  slander  of  title  and  not  a  libel  upon  the 
plaintiff;  that  the  burden  was  upon  the  plaintiff  to  prove 
malice,  falsity  and  special  damage,  and  that  the  cause  of 
action  sui-vived  the  plaintiff's  death.^^ 

The  remedy  for  libel  or  slander  affecting  the  title  to  a 
trademark  depends  upon  whether  there  is  a  threatened 
continuance  of  the  publication  of  the  libelous  or  slander- 
ous matter.  *' Courts  of  equity  have  no  jurisdiction  of 
libel  or  slander  affecting  title  to  property  or  property 
rights,  or  any  other  slander  or  libel,  unless  threatened  or 
apprehended  repetition  makes  preventive  relief  proper 
and  necessary.  The  remedy  for  past  injuries  of  that 
nature  is  understood  to  be  wholly  at  law."^^ 

§  21.  Are  trademark  rights  monopolistic  in  character? 
—In  some  jurisdictions,  there  has  been  a  tendency  to  re- 
gard trademark  rights  as  monopolies,  and  to  that  fact 
may  be  accredited  the  line  of  decisions  which  have  con- 
strued technical  trademark  rights  very  narrowly.^^ 

36 — Hubbuck    v.  Wilkinson     (C.  icy,  because  against  common  right. 

A.),  L.  R.   (1898)    1  Q.  B.  86.  The  grants,  charters,  letters  patent. 

37 — Mellin  V.  White,  L.  R.  (1895)  or  other  form  of  device  or  assur- 

A.  C.  154.  ance   by   the   sovereign     for    their 

38 — Hatchard  v.  Mege,  L.  R.  18  creation  were  declared  by  the  act 

Q.  B.  D.  771-775.  of  Parliament  of  21  Jac.  I,  c.  3,  to 

39 — Wheeler,    J.,     in    Palmer  v.  be  'utterly  void  and  of  none  effect, 

Travers,  20  Fed.  Rep.  501.  and  in  no  wise  to  be  put  in  use 

40 — "Monopolies     of     any     sort  and  operation.'     Nothing  short  of 

have  never  been  favorites  with  the  the     'omnipotence    of    parliament' 

law.     They  were  held  by  the  com-  is  able  to  exclude  a  subject  from 

mon  law  to  be  against  public  pel-  trade  in  England.     7  Bac.  Abr.  p. 

4 


50 


HOPKINS   ON   TRADEMARKS. 


[§21 


This  tendency  is  erroneous.  When  the  Statute  of 
Monopolies,  21  Jae.  I,  c.  3,  was  enacted,  in  1623,  trade- 
marks had  never  been  legally  recognized.  The  Statute, 
therefore,  could  have  no  possible  reference  to  trademark 
rights.  The  later  decisions  which  refer  to  trademarks 
as  being  monopolistic  in  character  have  been  based  upon 
a  misconception  of  what  constitutes  a  trademark.  Eesult- 
ing  as  it  does  from  the  mere  effort  of  the  producer  or 
handler  of  an  article  to  identify  his  goods  to  the  pur- 
chaser, it  is  merely  a  medium  of  authentication,  and 
while  the  owner's  title  to  it  is  necessarily  exclusive,  it  is 
in  no  sense  a  monopoly.  The  effort  of  an  infringer  to 
invade  that  right  is  not  a  laudable  attempt  to  break  a 
monopoly,  but  an  offense  against  society,  and  it  has  been 


23.  Two  exceptions  to  this  general 
rule  were  given  by  the  early  text 
writers:  First,  'It  seemeth  clear 
that  the  king  may,  for  a  reason- 
able time,  make  a  good  grant  to 
any  one  of  the  sole  use  of  any  art 
invented  or  first  brought  into  the 
realm  by  the  grantee.'  Second. 
The  king  may  grant  to  particular 
persons  the  sole  use  of  some  par- 
ticular employments,  as  'of  print- 
ing the  Holy  Scriptures  and  law 
books'  etc.  The  somewhat  curious 
reason  given  for  the  second  ex- 
ception is  that  an  unrestrained 
liberty  to  print  the  books  to  which 
it  relates  might  be  'of  dangerous 
consequences  to  the  public'  To 
these  exceptions  a  third  must  now 
be  added,  viz.  the  right  of  a  trades- 
man to  the  exclusive  use  of  such 
signs,  words,  or  symbols  as  he  may 
have  adopted  and  used  in  his  busi- 
ness to  distinguish  articles  of  his 
own  production  from  all  similar 
articles  produced  by  other  per- 
sons. These  exceptions  do  not  im- 
pair the  force  of  the  general  rule, 


'Exceptio  prohat  regulam  de  rebus 
non  exceptis.'  The  rule  is  unre- 
stricted liberty  in  the  practice  of 
all  arts  and  trades,  and  in  the  use 
of  the  methods  by  which  they  are 
conducted.  He  who  asserts  the 
right  to  an  exclusive  privilege  in 
any  department  of  business  must 
bring  himself  under  the  protection 
of  some  recognized  exception  to 
the  rule.  The  plaintiffs  in  this 
case  claim  an  exclusive  privilege 
under  the  third  exception,  viz.  the 
right  to  the  sole  use  of  a  certain 
trademark  adopted,  used,  and  reg- 
istered by  them;  and  they  allege 
that  the  defendants  have  adopted 
and  are  now  using  a  trademark 
which  is  an  imitation  of,  and  an 
infringement  upon,  their  own.  It 
becomes  important,  therefore,  to 
learn  just  what  the  plaintiffs'  trade- 
mark is,  and  then  to  determine 
whether  it  has  been  improperly 
imitated  by  the  defendants."  Wil- 
liams, J.,  in  P.  C.  Weist  Co.  v. 
Weeks,  177  Pa.  412,  35  Atl.  Rep. 
693. 


§  22]  HOPKINS  ON  TRADEMARKS.  51 

likened  by  the  courts  to  the  criminal  offenses  of  forgery 
and  counterfeiting.  Thus,  Judge  Rives  said,  ''That  any 
imitation  of  a  trademark,  calculated  to  deceive  the  un- 
wary customer,  differs  from  absolute  forgery,  not  in  the 
nature,  but  rather  in  the  extent  of  the  injury.  "^^ 

The  Supreme  Court  of  Missouri  has  said  that  ''If  by 
fraudulent  means,  other  parties  are  pennitted  to  counter- 
feit and  forge  and  simulate  these  trademarks  .  .  . 
the  connnunity  is  imposed  on  and  cheated.  "^- 

The  distinction  has  been  emphasized  by  a  Scottish 
court  in  the  following  language: 

"Monopoly  is  not  the  thing  for  which  the  one  party 
struggles  and  which  the  other  resists.  On  the  contrary, 
fair  trading  is  all  for  the  protection  of  which  the  law  is 
invoked;  and  the  public,  as  well  as  the  manufacturer  or 
merchant,  are  concerned  that  infringement  of  trademarks 
and  trade  designations  should  be  prevented.  For  there  is 
a  double  wrong:  the  public  are  or  may  be  deceived,  and 
the  trader  whose  trademark  or  trade  designation  is  in- 
fringed is  or  may  be  injured."^" 

§  22.  Title.— The  general  rule  has  been  stated  by  Mr. 
Justice  Clifford  to  be  that  "trademarks  are  an  entirety, 
and  are  incapable  of  exclusive  use  at  different  places  by 
more  than  one  independent  proprietor.  "^^  But  this  rule 
is  subject  to  exceptions;  or,  rather,  the  word  "exclusive," 
as  used  by  Mr.  Justice  Clifford,  must  not  be  construed  to 
mean  that  there  cannot  be  joint  and  several  ownership 
of  a  trademark.  Mr.  Justice  Bradley  has  said  at  Circuit 
that,  "In  holding  that  it  is  necessary  to  the  validity  of  a 
trademark  or  tradename  that  the  claimant  must  be  en- 
titled to  an  exclusive  right  to  it,  or  proi>erty  in  it,  we  do 
not  mean  to  say  that  it  may  not  belong  to  more  than  one 

41— Blackwell  v.  Armistead,  Fed.  v.    Young   &   Sons,    Ct.    Sess.    Cas. 

Case  No.  1474,  3  Hughes,  163.  4th  Ser.  X  874. 

42 — Wagner,  J.,  in  State  v.  Gibbs,  44— Manhattan  Med.  Co.  v.  Wood, 

56  Mo.  133,  136.  Fed.  Case  9026. 

43 — Lord  Craighill  in  Dunnachie 


52  HOPKINS   ON   TRADEMARKS.  [§  23 

person,  to  be  enjoyed  jointly  or  severally.  Copartners, 
upon  dissolution  of  a  partnership,  may  stipulate  that 
each  of  them  may  use  the  trademarks  of  the  firm,  and 
there  may  be  many  other  cases  of  joint  and  several  own- 
ership; but  such  co-owners  will  together  be  entitled  to  the 
exclusive  use  of  the  trademark,  and  perhaps  each  of  them 
will  be  entitled  to  such  exclusive  use  as  to  all  other  per- 
sons except  their  associates  in  ownership.^^  Judge  Swan 
has  said  that  a  trademark  ''may  be  the  subject  of  owner- 
ship by  two  or  more,  without  impairing  the  claim  of  its 
owners  to  redress  for  its  unlawful  use  by  others.  "^^ 

As  indicated  in  the  last  quotation,  general  and  several 
ownership  arises  frequently  upon  the  dissolution  of  part- 
nership, where  the  assets  are  divided  or  the  trademark 
is  not  sold  with  the  other  assets,  even  in  the  absence  of  a 
special  agreement.'*^ 

Joint  and  several  ownership  may  also  be  created  by 
consent.'*^  It  may  also  be  created  by  assignment."**^  And 
a  contract  foi'  the  purpose  of  establishing  and  defining 
the  respective  trademark  rights  of  the  parties  to  it,  and 
providing  for  the  addition  of  other  matter  to  the  trade- 
mark, in  order  to  prevent  confusion  between  the  goods  of 
the  parties,  has  been  sustained  upon  grounds  of  public 
policy.^^ 

§  23.  Licenses.— The  extent  to  which  licenses  for  the 
use  of  trademarks  may  be  granted,  has  not  yet  been  defi- 
nitely settled,  although  the  courts  have  repeatedly  recog- 
nized their  existence  and  enforced  them.  Thus,  relief  by 
injunction  was  granted  by  the  United  States  Circuit  Court 


45 — New  York  &.  R.  Cement  Ck).  48 — Emerson     v.     Badger,      101 

V.  Coplay  Cement  Co.,  45  Fed.  Rep.  Mass.  82;  Pratt's  App.  117  Pa.  401. 

212.  49— Fish  Bros.  Wagon  Co.  v.  La- 

46— Cleveland  Stone  Co.  v.  Wal-  Belle  Wagon  Works,  82  Wis.  ^46. 

lace,  52  Fed.  Rep.  431-439.  50— Waukesha  H.  M.  Springs  Co. 

47— Taylor  v.  Bothin,  Fed.  Case  v.  Hygeia  S.  D.  Water  Co.,  11  C 

No.    13,780;    Young  v.   Jones,  Fed.  C.  A.  277,  63  Fed.  Rep.  438. 
Case  No.  18159. 


§  23]  PREFATORY.  5^ 

in  Texas,  notwithstanding  the  defense  that  the  complain- 
ant had  granted  a  license  to  another  to  use  the  trademark 
within  the  state  of  Texas;  Judge  Sabin  remarking,  "The 
fee  to  the  trademark  still  remains  in  the  complainant,  and 
any  injury  to  it  will  justify  injunction."^*  And  in  a  more 
recent  case,  Judge  Hazel  construed  a  conveyance  of  *  *  the 
absolute  and  exclusive  use"  of  certain  trademarks  in  and 
to  certain  states,  reserving  the  right  to  the  personal  use 
of  the  mark  by  the  person  executing  the  conveyance,  to 
be  sufficient  to  entitle  the  grantee  in  the  conveyance  to 
maintain  suit  against  an  infringer.^^ 

It  is  to  be  regretted,  that  in  the  case  last  referred  to, 
the  court  did  not  go  fully  into  the  question  whether  ex- 
clusive contemporaneous  rights  to  the  same  trademark 
may  exist  in  different  parts  of  the  same  country.  The 
latter  question  is  wholly  undetermined,  and  is  probably 
the  most  important  question  concerning  the  tenure  of 
trademark  rights,  which  has  not  yet  been  adjudicated. 
In  a  recent  case.  Judge  Dallas  has  treated  the  question  of 
licensing  the  use  of  a  trademark  exactly  as  if  it  were  a 
license  under  a  patent,  wholly  on  the  authority  of  the 
well-established  line  of  decisions  in  patent  cases,  that 
where  there  is  an  exclusive  licensee  of  the  right  to  use  a 
trademark,  he  is  a  necessary  party  to  a  bill  for  its  in- 
fringement. In  this  case,  however,  the  mark  was  used 
uix)n  a  patented  article  during  the  life  of  the  patent, 
and  the  license  granted  covered  both  the  patent  and  the 
trademark  rights.^^ 

Where  the  defense  is  interposed  to  an  action  foi'  in- 
fringement, that  the  defendant  has  had  a  license  for 
its  use,  that  defense  is  met  by  showing  that  the  defend- 
ant has  failed  to  perform  all  the  conditions  of  the  licens- 


51 — Moxie   Nerve    Food    Co.    v.     Preserving  Co.,  131  Fed.  Rep.  359 
Baumbach.   32   Fed.   Rep.   205-210.       362. 

52 — Griggs,  Cooper  &  Co.  v.  Erie        53 — Wallach     v.     Wigmore,     S7 

Fed.  Rep.  469. 


54  HOPKINS   ON   TRADE  M^VRKS.  [§  23 

ing  agreement,  and  has  been  notified  by  the  plaintiff  that 
the  license  has  been  teiToinated.^'* 

In  an  action  for  the  recovery  of  license  fe^s,  the  defend- 
ant is  estopped  to  deny  the  validity  of  the  mark.^^ 

54— Martha  Washington   Cream-  55— Hilsen  v.  Libbey,  44    N.    Y. 

ery  Buttered  Flour  Co.  of  the  Uni-  Supr.  Ct  12. 
ted  States  v.  Martien,  44  Fed.  Rep. 
473. 


CHAPTER  n. 

THE  ACQUISITION  OF  A  TRADEMARK. 

§  24.  Who  may  acquire.— Generally  speaking,  any 
person^  capable  of  holding  title  to  personal  property 
may  acquire  the  right  to  a  trademark.  In  practice,  by 
far  the  greater  portion  of  all  trademarks  are  held  by 
manufacturers.  There  are,  however,  many  persons,  not 
manufacturers,  who  use  trademarks  as  a  means  of  iden- 
tifying the  subject-matter  of  their  commerce.  First 
among  these,  in  their  natural  order,  are  those  who  apply 
geographical  names  as  trademarks,  to  the  natural  pro- 
ducts of  the  earth.  This  may  be  done,  of  course,  only  by 
the  owner  of  its  sole  place  of  production,^  as,  if  the  pro- 
duct were  accessible  to  others,  there  could  be  no  exclusive 
right  to  the  trademark,  except  to  identify  the  person  who 
handled  the  product  on  its  way  to  the  consumer. 

This  leads  us  to  the  second,  and  larger,  class  of  those 
who  can  acquire  trademark  rights,  though  they  are  not 
manufacturers.  Many  mercantile  houses  who  merely  se- 
lect merchandise,  use  trademarks  upon  the  goods  they 

1 — "A  corporation  is  entitled  to  S.    242;    Radde   v.   Norman,   L.    R. 

have  its   trademark  as  well  as    a  14  Eq.  348;   Braham  v.  Beachim,  7 

private    individual,   and    may    sue  Ch.   D.   848;    47   L.  J.  Ch.  348;    38 

for  its  infringement."     Fenner,  J.,  L.   T.    N.    S.    640;    26    W.    R.    654; 

in  Insurance  Oil  Tank  Co.  v.  Scott,  Seb.    589;    Hill     v.    Lockwood,     32 

33  La.  Ann.  946.  Fed.  Rep.  389;  City  of  Carlsbad  v. 

2— Congress    &    Empire     Spring  Schultz,  78  Fed.  Rep.  469;   City  of 

Co.  v.  High  Rock  Congress  Spring  Carlsbad  v.  Kutnow,  71  Fed.  Rep. 

Co.,  45  N.  Y.  291-302;    10  Abb.  Pr.  167,   18   C.   C.  A.   24;    affirming  68 

N.  S.  348;  6  Am.  Rep.  82;  57  Barb.  Fed.   Rep.   794;    Northcutt  v.  Tur- 

526;  Cox,  599;  Dunbar  v.  Glenn,  42  ney,   101   Ky.   314;    41   S.  W.  Rep. 

Wis.    118;    Seb.    529;    Wheeler    v.  21.    To  the  same  effect  see  Atlan- 

Johnston,   3   L.   R.   Ir.   284;     Apol-  tic    Milling    Co.    v.    Robinson,    20 

linaris  Co.  v.  Norrish.  33  L.  T.  N.  Fed.    Rep.    217. 

55 


56 


HOPKINS  ON   TRADEMARKS. 


[§24 


SO  select,^  and  these  are  valid,  because,  in  the  language 
of  Mr.  Chief  Justice  Fuller,  the  marks  so  used  are  equiva- 
lent to  a  certificate  that  the  goods  so  marked  are  the 
genuine  article  which  has  been  determined  by  the  select- 
ors to  possess  a  certain  degree  of  excellence,  evidencing 
that  the  skill,  knowledge  and  judgment  of  the  selectors 
have  been  exercised  in  ascertaining  that  the  particular 
goods  so  marked  are  possessed  of  a  merit  rendered  defi- 
nite by  their  examination  and  of  a  uniformity  rendered 
certain  by  their  selection.^  Slightly  analogous  to  this 
class  of  cases  are  those  where  the  members  of  a  trades 
union  adopt  a  label  to  be  used  by  the  workmen  who  com- 
pose the  union,  upon  the  goods  manufactured  by  them. 
In  a  number  of  cases  their  right  to  the  protection  of  this 
label,  as  a  trademark,  has  been  denied,'^  while  in  others 
the  right  is  affirmed.^ 


3— Dewitt  V.  Mathey,  18  Ky.  L. 
Rep.  257,  35  S.  W.  Rep.  1113. 

4— Menendez  v.  Holt,  128  U.  S. 
514-520;  Levy  v.  Waitt  (1),  56 
Fed.  Rep.  1016;  Levy  v.  Waitt  (2), 
61  Fed.  Rep.  1008.  10  C.  C. 
A.  227;  Hirsch  v.  Jonas,  L. 
R.  3  Ch.  D.  584,  586;  Re  Aus- 
tralian Wine  Importers  (Ltd.),  41 
Ch.  D.  278-281;  Thompson  &  Co.  v. 
Robertson,  Ct.  Sess.  Cas.  (4th  ser.) 
XV,  880;  25  Scot.  L.  Rep.  649; 
Yale  Cigar  Mfg.  Co.  v.  Yale,  30  Off. 
Gaz.  1183;  Wood  v.  Lambert,  L.  R. 
32  Ch.  D.  247. 

5 — Ex  parte  Cigar  Makers'  Ass'n, 
16  Off.  Gaz.  958;  Schneider  v.  Wil- 
liams, 44  N.  J.  Eq.  391;  Cigar 
Makers'  Union  v.  Conhaim,  40 
Minn.  726  (the  last  case  by  a 
divided  court,  three  denying  the 
right  of  trademark  and  two  af- 
firming it)  ;  McVey  v.  Brendel,  144 
Pa.  St.  235;  Cox,  Manual,  Case  No. 
730;  Weener  v.  Brayton,  152  Mass. 
101;    Cox,   Manual,   Case  No.   712; 


State    V.     Berlinsheimer,     62     Mo. 
App.  165. 

6— Allen  v.  McCarthy,  37  Minn. 
349,  affirming  the  decision  of  the 
lower  court  by  an  equally  divided 
bench;  Bloete  v.  Simon,  19  Abb.  N. 
C.  88;  People  v.  Fisher,  57  N.  Y. 
Sup.  Ct.  552;  Cigar  Makers'  Pro- 
tective Union  v.  Lindner,  3  Ohio 
St.  Dec.  244;  Strasser  v.  Moonelis, 
108  N.  Y.  611;  Tracy  v.  Banker, 
170  Mass.  266;  Beebe  v.  Tolerton 
&  Stetson  Co.,  117  Iowa  593,  91  N. 
W,  Rep.  905;  Bulena  v.  Newman, 
31  N.  Y.  Supp.  449;  Cigarmakers' 
International  Union  of  America  v. 
Goldberg,  57  Atl.  Rep.  141;  Cohnv. 
People,  149  111.  486,  37  N.  E.  Rep. 
60;  State  v.  Hagen,  6  Ind.  App. 
167,  33  N.  E.  Rep.  223;  Hetterman 
V.  Powers  102  Ky.  133,  43  S.  W. 
Rep.  180.  In  Carson  v.  Ury,  Judge 
Thayer  remarks:  "It  is  no  doubt 
true  that  the  union  label  does  not 
answer  to  the  definition  ordinarily 
given  of  a  technical  trademark,  be- 


§25] 


THE   ACQUISITION    OF    A   TR.VDEMARK. 


57 


Importers'^  or  exporters**  may  have  trademarks  to 
identify  the  goods  passing  through  their  hands,  and  it 
has  been  held  that  a  bleacher  who  finishes  goods  manu- 
factured by  another  has  a  right  to  a  trademark  applied 
to  goods  so  treated  by  him." 

§  25.  User.  — There  can  be  no  right  in  a  trademark 
until  it  has  been  used.  Under  the  English  act'"  an  appli- 
cation for  registration  of  a  trademark  is  deemed  to  he 
equivalent  to  public  use  of  the  trademark.  But  even 
this  is  merely  to  supply  a  constructive  instead  of  the 
actual  user  required  at  common  law/^  and  the  general 
rule  is  not  affected  by  that  statute.'-  The  exclusive  right 
to  the  use  of  a  trademark  is  acquired  only  by  priority  of 
appropriation.    The  claimant  of  a  trademark  must  have 


cause  it  does  not  indicate  with  any 
degree  oi  certainty  by  what  par- 
ticular person  or  firm  the  cigars  to 
which  it  may  be  affixed  were  man- 
ufactured, or  serve  to  distinguish 
the  goods  of  one  cigar  manufac- 
turer from  the  goods  of  another 
manufacturer,  and  because  the 
complainant  appears  to  have  no 
vendible  interest  in  the  label,  but 
merely  a  right  to  use  it  on  cigars 
of  his  own  make,  so  long  and  only 
so  long  as  he  remains  a  member 
of  the  union.  In  each  of  these  re- 
spects the  label  lacks  the  charac- 
teristics of  a  valid  trademark."  In 
the  case  at  bar,  the  complainant 
being  a  manufacturer  of  cigars,  he 
was  granted  equitable  relief  on 
the  ground  of  unfair  competition. 
Carson  v.  Ury,  39  Fed.  Rep.  777; 
Cox.  Manual,  Case  No.  709.  As  to 
criminal  prosecution  for  infringe- 
ment of  union  label  see  State  v. 
Bishop,  128  Mo.  373.  As  to  the 
sufficiency  of  proof  in  such  a  prose- 
cution under  the  Massachusetts 
Statute  of  1895    (C.  462,  §   4),  see 


Commonwealth  v.  Rozen,  176 
Mass.   129,   57   N.   E.  Rep.    223. 

7— Godillot  V.  Hazard,  44  N.  Y. 
Super.  Ct.  427. 

8 — Robinson  v.  Finlay,  L.  R.  9 
Ch.  D.  487. 

9— Re  Sykes,  43  L.  T.  N.  S.  626. 

10 — Sec.  75,  Patents,  Designs  and 
Trademark  Act,  1883,  amended 
1888,  51  and  52  Vict.,  c.  50;  Re 
Hudson's  Trademark,  3  R.  P.  C. 
155;  32  Ch.  D.  311;  55  L.  J.  Ch. 
531;  55  L.  T.  228;  32  W.  R.  616; 
Cartmell,  168;  Edwards  v.  Dennis, 
30  Ch.  D.  454. 

11 — Under  the  act  of  18"0  it  was 
held  that  registration  was  equiva- 
lent to  public  use  of  a  trademark. 
Re  Dutcher  Temple  Co.,  Comr.  Dec. 
1871,  p.  248.  See  sections  7  and 
11  of  the  Act  of  1881;  Wm.  Rogers 
Mfg.  Co.  v.  Rogers  &  S.  Mfg.  Co., 
11  Fed.  Rep.  495. 

12 — Singer  Manufacturing  Co.  v 
Wilson,  2  Ch.  D.  434-440;  Lowell 
Mfg.  Co.  v.  Lamed,  Cox,  Manual, 
No.  428. 


58  HOPKINS   ON   TR.U)EM^\JIKS.  [§  26 

been  the  first  to  use  or  employ  the  same  on  like  articles 
of  production.^^  A  single  instance  of  user,  with  accom- 
panying circumstances  evidencing  an  intent  to  continue 
that  use,**  is  sufficient  to  establish  the  right  to  a  trade- 
mark; there  is  no  requirement  that  the  use  shall  continue 
for  any  prescribed  or  definite  length  of  time.^^  It  is  im- 
material that  the  first  use  of  the  mark  was  accidental,  for 
a  trademark,  in  the  language  of  the  United  States  Su- 
preme Court,  * '  is  often  the  result  of  accident  rather  than 
design."*® 

On  the  other  hand,  the  use  of  a  mark  may  be  *  *  so  tran- 
sitory^ spasmodic,  and  inconsiderable,"  as  not  to  vest 
title  in  its  user  as  against  one  whose  use  has  been  ''long- 
continued,  notorious,  and  universally  recognized."*'^ 

§  26.  Affixing  the  mark.— As  stated  in  our  definition, 
the  mark  must  be  affixed  to  the  subject  it  serves  to 
identify.  ''It  may  be  either  affixed  to,  or  impressed 
upon,  the  goods  themselves  by  means  of  a  stamp  or  an 
adhesive  label,  or  it  may  be  made  to  accompany  the 
goods  by  being  impressed  or  made  to  adhere  to  an  envel- 

13 — J.   R.  Watkins  Med.   Co.    v.  used     the     trademark."      Romilly, 

Sands,  83  Minn.  326,  86  N.  W.  Rep.  M.  R.,   in  Hall  v.  Barrows,  32  L. 

340.  J.  Ch.  548. 

14 — Columbia  Mill  Co.  v.  Alcorn,  The  right  exists    "the    moment 

150  U.  S.  460;    Tetlow  v.  Tappan,  the   article    goes    into    the   market 

85  Fed.  Rep.  774;   Hyman  v.  Soils  so  stamped."     Westbury,  L.  C,  in 

Cigar  Co.,  4  Colo.  App.  475;  Amer-  McAndrew   v.    Bassett,   4   DeG.   J. 

ican  Washboard   Co.    v.     Saginaw  &  S.  380-386. 

Mfg.  Co.,  43  C.  C.  A.  233;  103  Fed.  The   right  dates  from  the  time 

Rep.   281;    Welsbach   Light  Co.   v.  when  the  actual  occupation  of  the 

Adam,  107  Fed.  Rep.  463.  market    with    goods     bearing    the 

15 — Shaver  v.   Shaver,  54  Iowa,  mark   began.     Levy   v.    Waitt,    61 

208;     37   Am.   Rep.    194;     Hall   v.  Fed.   Rep.    1008-1011,   10   C.   C.   A. 

Barrows,   32   L.   J.   Ch.   548;    Seb.  227. 

215.  16 — Mr.  Justice  Miller  in  Trade- 

The  length  of  time  required  to  mark  Cases,  100  U.  S.  82. 

establish  the   right   of   trademark.  17 — Heublein  v.  Adams,  125  Ad- 

— "The  interference  of  a  court  of  ams,  125  Fed.  Rep.  782,  785.     And 

equity  cannot  depend  on  the  length  see  ante,  sec.  11. 
of    time     the     manufacturer    has 


§  27]  THE   ACQUISITION    OP    A    TR.VDEMARK.  59 

ope  or  case  containing  the  goods.  "^^  It  has  been  held  in 
England  that  a  trademark  may  be  water-marked/^'  and  a 
measuring  stick  with  an  octagonal  head,  used  as  a  core 
for  rolls  of  carpet,  has  been  held  to  be  of  itself  a  valid 
trademark.-^  The  question  of  the  mode  of  affixing  is 
purely  practical,  and  one  package,  parcel  or  bottle  of 
merchandise  may  bear  a  number  of  trademarks.  A  very 
large  percentage  of  the  liquors  imported  into  the  United 
States  from  Europe  bear  not  only  the  trademark  of  the 
producer,  but  also  that  of  the  bottler;  and  in  many  cases 
another  trademark,  that  of  the  capsule  manufacturer,  is 
to  be  found  impressed  in  the  metallic  capsule.  In  like 
manner  a  complicated  machine  may  bear  many  trade- 
marks, indicating  the  manufacturers  of  the  wheels,  axles, 
oil-cups,  bearings,  etc.,  and  the  machine  as  a  whole  bear 
the  comprehensive  trademark  of  the  maker  who  has  se- 
lected these  several  parts  and  assembled  them. 

A  trademark  cannot  be  acquired  by  merely  using  the 
mark  in  advertising.^^ 

§  27.  Registration  not  a  means  of  acquiring.— With 
the  solitary  exception  of  the  California  case  of  Whitiier 
V.  Dietz,"  it  has  nowhere  been  held  in  the  United  States 
that  the  right  to  a  trademark  is  created  by  registration.--^ 

18— Sir    G.    Jessel,    M.     R.,     in  22—66   Cal.    78.     This    decision 

Singer  Mfg.  Co.  v.  Wilson,  supra,  led  to  the  enactment  of  the  pres- 

19 — Alexander    Pirie   &    Sons    v.  ent   section    3199    of    the    Political 

Goodall,    L.    R.     (1891)     1    Ch.    D.  Code    of     California      (March    12, 

35-41;    holding  a  water-mark  to  be  1885),  providing  that  "Any  person 

a  "brand"  within  the  meaning  of  who  has  first  adopted  and  used  a 

sec.  64,  subsec.  2    (c)   of  the  Pat-  trademark  or  name,  whether  with- 

ents,     Designs     and      Trademarks  in  or  beyond   the  limits    of    this 

Act,  1883.  state,  is  its  original  owner." 

20 — Lowell  Mfg.   Co.  v.   Lamed,  23 — The  recording  of  a  name  as 

Cox,  Manual,  No.   428;     Fed.  Case  a   trademark   cannot   give    it    the 

No.  8570.  quality  of  a  trademark,  if  it  was 

21 — Hazelton   Boiler   Co.  v.   Ha-  not  theretofore  a  valid  trademark, 

zelton   Tripod   Boiler  Co.,   142  111.  Oakes    v.     St.     Louis    Candy   Co., 

494,  30  N.  E.  Rep.  339.     St.  Louis  146  Mo.  391;    48  S.  W.  Rep.  467. 

Piano   Mfg.   Co.   v.   Merkel,   1  Mo.  "The  general  rule  adopted  by  the 

App.  305.  courts  on  this  subject  is  that  state 


60 


HOPKINS   ON   TRADEM^iRKS. 


[§28 


Section  1  of  the  act  of  1905  provides  that  owners  of 
trademarks  used  in  commerce  may  obtain  registration 
of  such  trademarks  by  complying  with  the  requirements 
stipulated  in  the  act.  The  applicant  must  show  that  he, 
and  no  one  else,  has  a  right  to  use  the  mark;  that  he  is 
actually  using  it  in  commerce  with  foreign  nations  or 
among  the  several  states,  or  with  Indian  tribes;  and  that 
it  is  not  so  similar  to  the  registered  or  known  mark  of 
another  as  to  be  calculated  to  deceive.-"*  So  that  registra- 
tion under  the  act  of  congress  is  in  no  sense  a  means  of 
acquiring  the  right  to  a  trademark  ;2^  and  indeed  the  ac- 
tual application  of  the  trademark  in  commerce  is  so  es- 
sential a  prerequisite  to  registration  under  the  act,  that 
as  between  two  applicants  for  registration  of  the  same 
mark,  one  of  whom  had  in  fact  used  his  mark  in  trade, 
while  the  other  had  the  assignment  of  the  mark,  ac- 
quired by  transfer  from  its  inventor,  but  had  never  ac- 
tually applied  it,  the  commissioner  of  patents  held  that 

"Registration  under  the  act  of 
1881  is  of  but  little,  if  any,  value, 
except  for  the  purpose  of  creating 


statutes  providing  for  registration 
of  trademarks  are  in  affirmance  of 
the  common  law;  that  the  reme- 
dies given  by  such  statutes  are 
either  declaratory  or  cumulative 
and  additional  to  those  recognized 
and  applied  by  the  common  law." 
Per  curiam,  in  Woodcock  v.  Guy, 
33  Wash.  234,  74  Pac.  Rep.  358. 
"As  the  name  'Remington'  is  an 
ordinary  family  surname,  it  was 
manifestly  incapable  of  exclusive 
appropriation  as  a  valid  trade- 
mark, and  its  registration  as  such 
could  not  in  itself  give  It  valid- 
ity." Mr.  Chief  Justice  Fuller  in 
Howe  Scale  Co.  v.  Wyckoff,  Sea- 
mans  &  Benedict,  198  U.  S.  118. 

24 — Ex  parte  Lyon,  Dupuy  &  Co., 
28  Off.  Gaz.  191. 

2.5 — "Property  in  trademarks 
does  not  derive  its  existence  from 
an  act  of  congress."  La  Croix  v. 
May,  15  Fed.  Rep.  236. 


a  permanent  record  of  the  date  of 
adoption  and  use  of  the  trade- 
mark, or  in  cases  where  it  is  nec- 
essary to  give  jurisdiction  to  the 
United  States  courts."  Hawley, 
J.,  in  Hennessy  v.  Braunschwei- 
ger  &  Co.,  89  Fed.  Rep.  665-668; 
quoted  and  followed  in  Sleepy  Eye 
Milling  Co.  v.  C.  F.  Blanke  Tea 
and  Coffee  Co.,  85  Off.  Gaz.  1905. 
It  does  not  create  a  trademark. 
United  States  v.  Braun,  39  Fed. 
Rep.  775;  Sarrazin  v.  W.  R.  Irby 
Cigar  Co.,  93  Fed.  Rep.  624-627, 
35  C.  C.  A.  496;  Brower  v.  Boul- 
ton,  53  Fed.  Rep.  389,  390;  Brower 
V.  Boulton  (2),  58  Fed.  Rep.  888- 
890,  7  C.  C.  A.  567;  Einstein  v. 
Sawhill,  65  Off.  Gaz.  1918;  Sher- 
wood V.  Horton,  Cato  &  Co.,  84  Off. 


§  29]  THE   ACQUISITION    OF   A   TRADEMARK.  61 

the  actual  prior  use  determined  the  right  to  the  mark.^* 
But  registration  under  the  laws  of  the  United  States  and 
under  the  laws  of  several  of  the  states,  while  creating  no 
new  rights,  confers  remedies  and  special  protection  to 
the  owner  of  a  trademark  which  we  will  examine  in  an- 
other chapter. 

§  28.  Acquisition  by  assignment.— The  assignment  of 
trademarks  is  a  subject  of  some  difficulty  and  is  discussed 
elsewhere  in  this  book.  It  is  sufficient  in  this  connection 
to  say  that  trademark  rights  are  generally  assignable, 
that  quality  being  indispensable  to  the  striking  charac- 
teristic of  perpetual  existence  possessed  by  trademarks, 
and  that  a  proper  assignment  conveys  to  the  assignee  all 
the  property  rights  in  and  to  the  trademark  possessed  by 
his  assignor.-^  The  Act  of  1905,  Sec.  10  provides  that  a 
registered  trademark  and  trademarks  for  the  registra- 
tion of  which  application  has  been  made,  shall  be  assign- 
able in  connection  with  the  good-will  of  the  business  in 
which  it  is  employed;  and  any  assignment  of  such  mark 
shall  be  void  as  against  a  subsequent  purchaser  for  value 
without  notice  unless  recorded  in  the  Patent  Office  within 
three  months  from  its  date.  We  need  note  at  this  time 
only  the  general  restriction  on  the  assignability  of  trade- 
marks—that they  cannot  be  assigned  save  in  connection 
with  the  good-will  of  the  business  with  which  they  are 
identified.-^ 

It  is  true  of  trademarks  as  of  other  personal  property 
that  the  great  mark  of  ownership  is  possession,  and  con- 
tracts that  the  title  to  personalty  shall  be  in  one  party  and 
the  possession  in  another  cannot  be  set  up  to  the  preju- 
dice of  a  bona  fide  purchaser  without  notice.  Accordingly, 
a  contract  that  the  right  to  use  the  mark  shall  revert  to 
the  assignor  should  the  assignee  sell  his  business,  cannot 

Gaz.  2018;     La  Croix    v.    May,  15        27— Walton  v.  Crowley,  3  Blatch. 

Fed.  Rep.   236.  440;  Cox,  166,  Fed.  Case  No.  17.133. 

26— Schrauder    v.    Beresford  &         28— Field,  .T.,  in  Kidd  v.  Johnson, 

Co.,  Browne,  Trademarks,   661.  100  U.  S.  617-620. 


62  HOPKINS   ON   TRADEMARKS.  [§  30 

avail  as  against  a  bona  fide  purchaser  from  the  assignee, 
buying  without  notice.-^ 

^  29.  Acquisition  by  an  alien.— In  1844  Chancellor  Wal- 
worth announced  that  in  the  interposition  of  equity  for 
the  protection  of  trademark  rights  "there  is  no  difference 
between  citizens  and  aliens.  "^'^  This  is  also  the  rule  in 
Engiand,^^  Scotland,^-  Canada,^^  and  India.^^  But  it  has 
been  held  that  a  foreigner  has  no  common-law  right 
to  a  trademark  in  the  United  States  as  against  a  citizen 
who  has  adopted  a  similar  mark,  in  good  faith,  before  the 
alien  has  sold  any  goods  in  this  country .^^ 

§  30.  Priority  of  appropriation.— In  order  to  acquire 
a  trademark,  its  claimant  must  be  its  first  appropriator, 
as  we  have  seen;  for,  as  said  by  Finletter,  J.,  "in  no 
other  way  can  a  mark  or  device  indicate  'true  origin  or 
ownership. '  '  '^*^  Indeed,  Bouvier  has  defined  the  right  of 
trademark  in  these  terms;  "The  right  of  trademark  is 
said  to  be  best  termed  an  exclusive  right  arising  from 
first  usej"^"  and  it  has  been  said  by  the  United  States 

29 — Oakes     v.     Tonsmierre,     49  J.    423;    Collins   Co.   v.   Walker,   7 

Fed.   Rep.   447-452.  W.  R.   222;    Collins  Co.  v.  Reeves, 

30— Taylor  v.  Carpenter   (3),  11  28  L.  J.  Ch.  56;    How©  v.  McKer- 

Paige  Ch.,  292-296;    3   Story,  458;  nan,  30  Beav.  547. 

2  Wood.  &  M.  1;   Cox,  45.  This  is  32— Singer  Mfg.  Co.  v.  Kimball 

the    general   rule    in   the     United  &  Morton,  Ct.  Sess.  Cas.   (3d  ser.) 

States.      La  Croix  v.  May,  15  Fed.  XI.  267. 

Rep.    236;     Lemoine  v.  Gauton,    2  33 — Davis  v.  Kennedy,  13  Grant, 

E.  D.  Smith,  343;   Cox,  142;   Coats  Up.   Can.    Ch.   523.   Pabst  Brewing 

V.    Holbrook,    2    Sandf.     Ch.     586;  Co.  v.  Ekers,  Rap.  Jud.  Que.  21  C. 

Cox,    20;    Coffeen     v.    Brunton,     4  S.  545. 

McLean,  516;    Cox,  82;   and  under  34 — Orr-Ewing     v.      Chooneeloll 
a  criminal  act  against  counterfeit-  Mullick,    Cor.    150;     Orr-Ewing    v. 
ing  trademarks,  a  conviction  was  Grant,  Smith  &  Co.,  2  Hyde,  185. 
sustained  by  the  Missouri  supreme  35— Richter    v.  Anchor   Remedy 
court  where  the  defendant  counter-  Co.,  52  Fed.  Rep.  455. 
feited    the    mark   of     an     English  36— Sheppard  v.  Stuart,  13  Phil, 
manufacturer.     State  v.   Gibbs,  56  117;    Price  &  Steuart,  193-200. 
Mo.  133.  37— Bouvier,  Diet.,  title  "Trade- 
Si — Collins  V.  Cowen,  3  K.  &  .T.  marks." 
428;    Collins  Co.  v.  Brown,  3  K.  & 


§  30]  THE    ACQUISITION    OF    A    TR^VDEM.VRK.  63 

supreme  court  that  "The  exclusive  right  to  the  use  of  a 
mark  or  device  chiimed  as  a  trademark  is  founded  on 
priority  of  appropriation;  that  is  to  say,  the  claimant  of 
a  trademark  must  have  been  the  first  to  use  or  employ 
the  same  on  lilvo  articles  of  production.  "^'^  There  must 
necessarily  be  such  a  use  as  qualifies  the  mark  as  an  in- 
dication of  the  origin  and  ownership  of  the  goods  to 
which  it  is  applied.  If  the  same  mark  had  been  in  prioi* 
use  by  another  at  the  same  place  or  another  locality  near 
enough  to  start  a  similar  right,  the  second  user  could 
have  no  trademark  right  to  it.^'-*  "In  order  that  the 
claimant  of  the  trademark  may  primarily  acquire  the 
right  of  property  in  it,  it  must  have  been  originally 
adopted  and  used  by  him— that  is,  the  assumed  name 
or  designation  must  not  be  one  that  was  then  in  actual 
use  by  others;  and  such  adoption  and  use  confer  upon 
liim  the  right  of  property  in  the  trademark. "■'^  A  trade- 
mark having  no  necessary  relation  to  invention  or  dis- 
covery,^^ it  is  the  party  who  first  actually  uses  a  mark, 
and  not  the  one  who  first  thought  of  it  or  designed  it,  that 
is  entitled  to  protection  in  its  use  as  a  trademark.^-  A 
mere  declaration  of  intention  to  use  a  certain  mark  in 
the  future  does  not  create  a  right  to  its  use  as  a  trade- 
mark, for  such  right  can  only  originate  with  the  actual 


38— Columbia  Mill  Co.  v.  Alcorn,  tate  or'  Bassett,  60  MSS.   D.   Sept. 

150  U.  S.  460.     See  also  Manitowoc  1896. 

Mfg.    Co.    V.    Dickerman,     57     Off.  .<The  right  to  a  trademark  does 

Gaz.  1721.  j^qI^  depend  upon  originality,  even 

39— Tetlow   V.   Tappan,   85    Fed.  ^s  against  the  originator    of    the 

Rep.   774;    Hyman  v.   Soils    Cigar  characteristic  use."    Holmes,  C.  J.. 

Co..  4  Colo.  App.  475.  jn  ^^.t  v.  Tucker,  178  Mass.  493; 

40— Derringer  v.   Plate,   29    Cal.  59  n.  E.  Rep.  1111;  Citing  Monson 

292;  Cox,  324.  y   Boehm,  L.  R.  26  Ch.  D.  398,  407, 

41— Trademark  Cases,  100  U.  S.  408;   Levy  v.  Waitt   (2),  10  C.  C. 

82.  A.   227,    61   Fed.   Rep.    1008.   25   L. 

42— George    v.    Smith,     52     Fed.  R.  A.  190;   Julian  v.  Hoosier  Drill 

Rep.   830;   Trisdorfer  &  Co.  v.  Es-  Co..  78  Ind.  408,  412. 


64  HOPKINS   ON   TRADEMARKS.  [§30 

use  of  the  mark  in  commerce."*^  And  it  lias  been  held  in 
England,  by  Lord  Justice  Cairns,  that  there  can  be  no 
right  of  trademark  until  the  goods  bearing  the  mark  are 
actually  upon  the  market,  and  that  it  cannot  be  pro- 
tected before  that  time,  even  though  the  goods  to  which 
it  is  to  be  applied  are  in  the  course  of  manufacture,  and 
the  claimants  of  the  mark  have  made  expenditures  in 
advertising  it.^^  The  right  to  the  mark  must  relate  back 
to  its  first  use.  One  cannot  imlawfully  appropriate  a 
trademark  belonging  to  another,  and  subsequently  ac- 
quire a  good  title  thereto  by  the  abandonment  thereof  by 
the  first  proprietor.^5  But  a  mark  once  abandoned  is 
open  to  appropriation  by  another  who  adopts  it  subse- 
quently in  good  faitli.^*^ 

As  a  matter  of  practice,  inasmuch  as  the  plaintiff  must 
show  title  in  order  to  make  a  case,  evidence  of  the  fact 
that  he  or  his  predecessor  in  title  was  the  first  to  appro- 
priate the  mark  to  the  class  of  goods  for  which  he  claims 
it  as  a  trademark,  is  usually  a  part  of  the  prima  facie 
case.  In  a  New  York  case,  it  was  shown  in  defense  that 
prior  to  the  date  when  plaintiff  first  labeled  cigars  with 
the  label  in  controversy,  certain  label  manufacturers  had 
sold  the  same  label  to  other  jJersons  in  the  trade.  Injunc- 
tion was  denied  upon  the  ground  that  such  evidence 
negatived  plaintiff's  claim  of  exclusive  title.^^ 

It  is  now  well  established  that  priority  of  adoption 
alone  does  not  necessarily  determine  the  ownership  of  the 
mark.  The  use  of  "the  mark  by  one  claimant  may  be  "so 
transitory,  spasmodic,  and  inconsiderable,"  as  not  to 
vest  title  in  the  user  as  against  one  whose  use  has  been 

43 — Schneider  v.  Williams,  44  N.  45 — O'Rourke    v.     Central     City 

J.  Eq.  391;    14  Atl.    Rep.    812;     44  Soap  Co.,  26  Fed.  Rep.  576-578. 

Off.  Gaz.  1400.  46— Brower  v.  Boulton,   53   Fed. 

44— Maxwell   v.   Hogg,   L.   R.     2  Rep.  389. 

Ch.  307;    36  L.   J.   Ch.  433;   16  L.  47— Wagner     v.     Daly,    97    Hun 

T.  N.  S.  130;  Seb.  264.  477,  22  N.  Y.  Supp.  493. 


§  30]  THE   ACQUISITION    OF   A   TR.VDEMARK.  65 

"long  continued,  and  universally  recognized. ""^^  As 
Judge  Elmer  B.  Adams  has  stated  it,  *'TLe  right  to  a 
trademark  at  common  law,  independent  of  the  registra- 
tion statute,  is  not  created  by  invention  or  priority  of 
adoption  alone.  A  word,  sjinbol,  or  device,  to  be  a  valid 
trademark  constituting  a  right  of  proi)erty,  must  have 
been  used  by  the  owner  in  connection  with  the  sale  of  his 
goods  for  such  length  of  time,  and  under  such  circum- 
stances, as  indicates  to  the  trade  that  the  goods  in  con- 
nection with  which  it  appears  are  his  goods,  as  distin- 
guished from  those  of  other  manufacturers  or  dealers. 
The  mere  adoption  of  such  word,  symbol,  or  device,  un- 
accompanied by  such  a  use,  is  not  sufficient  to  create  an 
exclusive  right  thereto.  "^^ 

48— Heublein  v.  Adams,  125  Fed.  To  the  same  effect  see  Tetlow  v. 

Rep.  782,  785.  Tappan,    85    Fed.   Rep.    774,     775; 

49— Macmahan  Pharmacal  Co.  v.  Levy  v.  Waitt,  10  C.  C.  A.  227,  61 

Denver    Chemical     Mfg.    Co.     113  Fed.  Rep.  1008,  25  L.  R.  A.  190. 
Fed.  Rep.  468-47C;  51  C.  C.  A.  302. 


CHAPTER  ni. 

WHAT  CONSTITUTES  A  VALID  TRADEMARK. 

§  31.  The  general  rule.— Having  seen  in  the  preced- 
ing chapters  something  of  the  general  requisites  of  a 
valid  trademark,  we  now  approach  the  subject  of  the 
more  exact  tests  to  be  applied  in  determining  its  valid- 
ity. It  is  the  general  rule  that  a  mark  must  be  truthful 
and  unobjectionable  on  the  ground  of  being  a  generic 
term.^ 

§  32.  It  must  be  truthful.— This  rule  is  apparently 
simple,  yet  it  has  given  rise  to  much  discussion  and  some 
apparent  conflicts  in  the  decisions.  Honest  competition 
is  the  requirement  of  the  chancellor,  and  he  is  just  as 
ready  to  dismiss  the  bill  of  a  complainant  whose  trade- 
mark is  calculated  to  deceive  the  public  into  a  belief 
that  his  goods  are  something  other  than  they  actually 
are,  as  he  is  to  enjoin  the  defendants  where  he  has  in- 
fringed an  honest  trademark.  The  modern  law  of  unfair 
trade  is  a  perfect  superstructure  of  ethical  principles, 
founded  upon  the  basis  of  all  ethics— honesty.  In  no 
class  of  cases  is  the  rule  that  he  who  comes  into  a  court 
of  equity  must  do  so  with  clean  hands  more  rigidly  ap- 
plied.^ It  is  not  material  whether  the  words  or  symbols 
used  as  trademark  contain  the  deceptive  or  untruthful 
statement.  Indeed  the  dishonest  matter  is  usually  for- 
eign to  the  mark  itself,  and  contained  in  other  matter 
used  in  advertising  or  describing  the  goods  sold  under 
the  mark. 

1 Prince    Mfg.    Co.    v.    Prince's        2 — Dadirrian    v.     Yacubian,     98 

Metallic  Paint  Co.    (2),  135  N.  Y.     Fed.  Rep.  872-876. 
24,  31  N.  E.  Rep.  990. 

66 


§  33]  WHAT    CONSTITUTES   A   VALID    TRADEMARK.  67 

§  33.  A  dishonest  label  will  invalidate.— We  find  that 
where  a  distiller  mixed  nearly  thirty-six  per  cent,  of 
other  whiskies  with  his  own  brand,  and  sold  the  blend 
under  a  label  formerly  used  upon  whisky  of  his  own  dis- 
tillation, with  cautions  to  avoid  imitations  and  asserting 
that  the  mixture  was  "bottled  at  the  distillery  warehouse 
and  is  warranted  perfectly  pure  and  unadulterated,"  an 
injunction  was  refused  because  of  this  misrepresentation. 
This  decision,  whose  tendency  is  more  far-reaching  than 
that  of  Manhattan  Medicine  Co.  v.  Wood,^  seems  on  the 
reading  of  the  facts  to  impose  a  hardship  on  the  owners 
of  the  mark,  Jas.  E.  Pepper  &  Co.  The  interest  of  the 
complainant  was  derived  under  a  contract  with  that  firm 
giving  him  the  entire  control  of  their  trade  in  bottled 
whisky.  The  proof  showed  that  up  to  and  including 
the  3^ear  1891  the  Pepper  Company  bottled  nothing  un- 
der the  gold  trade  label  partially  described  above  used 
by  them  but  "Old  Pepper"  whisky  distilled  by  them, 
but  that  after  November,  1891,  the  demand  for  the  dis- 
tillery bottling  became  so  great  that  they  could  not  sup- 
ply it  with  the  output  of  their  own  distillery  and  therefore 
bought  other  whiskies  shown  to  be  more  expensive,  older 
and  made  by  the  same  formula  as  their  own,  and  blended 
these  whiskies  with  their  own,  and  bottled  the  resulting 
blend  under  the  same  label  and  trademark.  Here,  if  ever, 
one  would  think  equity  would  relax  its  rule,  and,  as  the 
public  had  not  suffered  by  the  complaixiant 's  acts,  would 
continue  to  protect  the  trademark.  But  the  learned  court 
thus  tersely  applies  the  principles:  "Pepper  offers  as  an 
excuse  for  bottling  a  mixture  that  the  demand  for  his 
goods  had  so  increased  that  he  could  not  supply  it  with 
Pepper  whisky.  What  was  this  demand  for?  Plainly 
for  pure  and  unadulterated  Pepper  whisky,  bottled  at  the 
distillery.  If  this  could  not  be  honestly  supplied,  then  it 
could  not  be  supplied  at  all  in  such  a  way  as  to  keep  the 

3—108  U.  S.  218. 


5S  HOPKINS   ON   TR^VDEMARKS.  [§  34 

business  within  the  protection  of  a  court  of  equity.  Re- 
lief is  refused  to  Pepper  and  his  privies  because  of  his 
misrepresentations  to  the  public."^  Thus  is  emphasized 
the  statement  of  Mr.  Justice  Field  that  the  protection  of 
equity  is  extended  to  the  owner  of  a  trademark  '' not  only 
as  a  matter  of  justice  to  liiru,  but  to  prevent  imposition 
upon  the  public. '  '^  There  are  a  number  of  cases  in  which 
the  misrepresentation  has  been  held  to  be  so  slight  and 
immaterial  as  not  to  disentitle  the  complainant  to  relief.^ 
Thus,  a  claim  by  the  manufacurer  of  a  patent  medicine 
that  it  permanently  overcomes  habitual  constipation,  will 
not,  even  if  untrue,  disentitle  the  plaintiff  from  relief 
in  equity,  the  court  taking  judicial  notice  of  the  fact  that 
the  effect  of  any  medicine  for  constipation  is  largely 
dependent  upon  the  constitution  and  habits  of  the  per- 
son treated.'^ 

The  use  of  the  words  ''Sole  Manufacturer"  by  a  dealer 
who  does  not  manufacture,  but  has  the  article  produced 
for  him  by  another,  has  been  held  not  to  debar  the  user  of 
the  trademark  from  equitable  relief,*  as  has  the  addition 
of  the  word  ''distillers"  to  the  firm  name  of  former  pro- 
prietors of  a  distillery  owned  by  a  complainant.^ 

§  34.  The  cases  of  false  representation  in  connection 
with  trademarks.— In  1837  the  English  High  Court  of 
Chancery  in  Pldding  v.  Hoiv,  announced  that  it  could  not 

4 — Krauss    v.   Jos.    R.    Peebles'  Amoskeag   Manufacturing    Co.     v. 

Sons  Co.,  58  Fed.  Rep.  584-596.  An  Trainor,  101  U.  S.  51. 

English  case  resembling  this  as  to  6 — Tarrant  &  Co.  v.  Hoff,  71  Fed. 

the   facts   is    Starey   v.   Chilworth  Rep.   163;    affirmed,   76   Fed.   Rep. 

Gunpowder  Co.,  L.  R.  24  Q.  B.  D.  959,  22  C.  C.  A.  644;    Centaur  Co. 

90.  V.    Robinson,    91    Fed.     Rep.     889; 

Relief  will   be   denied    in    such  Ransom  v.  Ball,  7  N.  Y.  Supp.  238. 

cases   although   the   article   is   ac-  7— California   Fig   Syrup  Co.   v. 

tually  as  good  as  it  is  represented  Worden,  95  Fed.  Rep.  132-134. 

to  be.     Prince  Mfg.  Co.  v.  Prince's  8— Gluckman  v.  Strauch,  91   N. 

Metallic  Paint  Co.    (2),  135  N.  Y.  Y.  Supp.  223. 

24,  31  N.  E.  Rep.  990.  9— Frazier  v.  Bowling,  18  Ky.  L. 

5— Manhattan  Medicine     Co.     v.  Rep.  1109,  39  S.  W.  Rep.  45. 
Wood,    108    U.    S.    218-223;     citing 


§  34]  WHAT    CONSTITUTES   A    VALID   TRADEMARK.  69 

interfere  in  behalf  of  a  plaintiff  who  had  "thought  fit 
to  mix  up  that  which  may  be  true  with  that  which  is 
false"  in  his  labels  and  advertisements.^^  The  Court 
of  Appeals  of  New  York  in  a  similar  case  in  1848,  by 
Gardiner,  J.,  observed  laconically,  "The  privilege  of  de- 
ceiving the  i)ublic,  even  for  their  own  benefit,  is  not  a 
legitimate  subject  of  commerce;  and  at  all  events,  if  the 
maxim  that  he  who  asks  equity  must  come  with  pure 
hands  is  not  altogether  obsolete,  the  complainant  has 
no  right  to  invoke  the  extraordinary  jurisdiction  of  a 
court  of  chancery  in  favor  of  such  a  monopoly.  "^^  Prior 
to  this,  an  injunction  was  refused  where  the  mark  in 
question  was  applied  by  the  complainant  to  a  "quack" 
medicine.^-  "Balm  of  Thousand  Flowers,"  the  name  of 
a  cosmetic,  being  deceptive,  its  infringement  by  a  defend- 
ant assuming  the  name  "Balm  of  Ten  Thousand  Flow- 
ers" was  not  enjoined,''^  although  the  same  mark  was 
held  valid  and  the  rule  announced  that ' '  the  public  should 
be  left  to  its  own  guardianship"  in  Fet ridge  v.  Mer- 
chant }^  But  the  doctrine  generally  is  that  of  Pidcling  v. 
HowP 

10— Pidding  V.  How,  8  Sim.  477;  212;    36    How.    Pr.    33;    Cox,    434; 

Cox,  640;   followed     in     Perry     v.  Palmer  v.  Harris,  60  Pa.  St.  156; 

Trueflt,  6  Beav.  66;    Cox,  644.  8    Am.    L.    Reg.    N.    S.    137;    Cox, 

11— Partridge  v.  Menck,  2  Sandf.  523;    Dixon   Crucible   Co.   v.   Gug- 

Ch.  R.  622;   2  Barb.  Ch.  R.  101;   1  genheim,    3    Am.    Law    T.    228;     2 

How.  App.  Cas.  558;   Cox,  72.  Brewster,  321;    Cox,  559;    Leather 

12 — Towle  V.  Spear,  7  Penn.  L.  Cloth    Co.    v.    American    Leather 

J.  176;  Cox,  67;  followed  in  Heath  Cloth  Co.,  11  Jur.  N.  S.  513;  Cox, 

V.  Wright,  3  Wall.  Jr.,  1;  Cox,  154.  688;    11    H.   L.    C.   543;    Flavel   v. 

13 — Fetridge   v.    Wells,     4    Abb.  Harrison,  10  Hare,  467;  Morgan  v. 

Pr.  144;  13  How.  Pr.  385;  Cox,  180.  McAdam,   36   L.   J.   Ch.   228;    Ford 

14—4  Abb.  Pr.  156;  Cox,  194.  v.  Foster,  L.  R.  7  Ch.  D.  611;    41 

15— Supra,  8  Sim.  477;  Cox,  640.  L.  J.  Ch.  682;   Re  Saunion  &  Co.. 

The   rule   is   conceded,   announced  Cox,  Manual,  No.  625;  Estcourt  v. 

or  followed  in  Hobbs  v.  Francais,  The  Estcourt  Hop  Essence  Co.,  31 

19  How.  Pr.  567;  Cox,  287;  Phalon  L.  T.  N.   S.   567;    L.  R.  10  Ch.   D. 

V.  W^right,  5  Phila.  464;   Cox.  307;  276;   44  L.  J.  Ch.  223;  32  L.  T.  N. 

Smith  V.  Woodruff,  48  Barb.  438;  S.    80;    23    W.    R.    213;    Joseph    v. 

Cox,  373;  Curtis  v.  Bryan,  2  Daly,  Macowsky,  96  Cal.    518;    Merlden 


70  HOPKINS   ON   TRADEMARKS.  [§  34 

The  general  rule  concerning  the  effect  of  false  represen- 
tations by  the  plaintiff  in  the  use  of  the  mark  upon  his 
right  to  relief  in  equity,  has  been  comprehensively  stated 
by  Mr.  Justice  Shiras,  as  follows:  "When  the  owner 
of  a  trademark  applies  for  an  injunction  to  restrain  the 
defendant  from  injuring  his  property  by  making  false 
representations  to  the  public,  it  is  essential  that  the  plain- 
tiff should  not  in  his  trademark,  or  in  his  advertisements 
and  business,  be  himself  guilty  of  any  false  or  misleading 
representation;  that  if  the  plaintiff  makes  any  material 
false  statement  in  connection  with  the  property  which  he 
seeks  to  protect,  he  loses  his  right  to  claim  the  assistance 
of  a  court  of  equity;  that  where  any  symbol  or  label 
claimed  as  a  trademark  is  so  constructed  or  worded  as 
to  make  or  contain  a  distinct  assertion  which  is  false,  no 
property  can  be  claimed  in  it,  or,  in  other  words,  the 
right  to  the  exclusive  use  of  it  cannot  be  maintained."^® 

For  the  reasons  we  have  been  considering  in  this  chap- 
ter, the  patent  office  has  refused  to  admit  to  registration 
as  a  trademark  for  powdered  soap  ' '  the  picture  of  a  bag 

Britannia  Co.  v.  Parker,  39  Conn.  Cartmell,  242;   Kenny  v.  Gillet,  70 

454-460;    Laird  v.  Wilder,  2   Bush  Md.  574;  Siegert  v.  Abbott  (1),  61 

(Ky.),  131;  15  Am.  Rep.  707;  Con-  Md.  276;  Parlett  v.  Guggenheimer, 

nell    V.   Reed,   128    Mass.    477;    35  67  Md.  542;   Palmer  v.  Harris,  60 

Am.  Rep.  299;   Wolfe  v.  Burke,  7  Pa.  St.  156;   Hoxie  v.  Cheney,  143 

N.  Y.  Sup.  Ct.  151;    56  N.  Y.  115;  Mass.  592;  10  N.  E.  Rep.  713;  Clot- 

2  Off.  Gaz.  441;    Seabury  v.  Gros-  worthy   v.    Schepp,    42   Fed.     Rep. 

venor,  Fed.  Case  No.  12576;  14  Off.  62;    California   Syrup  of  Figs  Co. 

Gaz.  679;  Hennessy  v.  Wheeler,  69  v.  Stearns    (2),  73  Fed.  Rep.  812; 

N.  Y.   271;    Piso   Co.  v.  Voight,  4  Buckland  v.  Rice,  40  Ohio  St.  526; 

Ohio  N.  P.  347;   California  Syrup  Burton   v.   Stratton,  12   Fed.   Rep. 

of  Figs  Co.  V.  Stearns  (1),  67  Fed.  696-699;    Ginter  v.   Kinney  Tobac- 

Rep.   1008;    Wood   v.   Butler,  3   R.  co  Co.,  12  Fed.  Rep.  782. 
P.  C.  81;    L.    R.    32    Ch.  D.    247;         16— Clinton  E.  Worden  &  Co.  v. 

55   L.    J.   Ch.   377;    54    L.   T.   314;  California   Fig   Syrup   Co.,   187   U. 

Cartmell,  349;  Re  Heaton's  Trade-  S.  516,  528;   47  L.  ed.  282,  288.  To 

mark,  L.  R.  27  Ch.  D.  570;   53  L.  the  same  effect  see  Uri  v.  Hirsch, 

J.  Ch.  959;  51  L.  T.  220;  32  W.  R.  123  Fed.  Rep.  568;    Millbrse  Co.  v. 

951;    Cartmell,    160;     Newman    v.  Taylor,    (Cal.),   37  Pac.   Rep.   235, 

Pinto,  4  R.  P.  C.  508;   57  L.  T.  31;  25  L.  R.  A.  193. 


§  35]  WHAT    CONSTITUTES   A   VALID   TRADEMARK.  71 

having  the  open  end  thereof  closed  by  a  tie,"  the  commis- 
sionei'  holding  that  such  a  mark  was  necessarily  decep- 
tive or  descriptive,  and  in  either  event  was  not  a  valid 
trademark  .^^ 

§  35.  Manhattan  Medicine  Co.  v.  Wood.— This  de- 
cision, the  language  of  whose  oi)iuioii  has  been  more 
often  cited  in  support  of  the  proposition  under  consider- 
ation than  any  other,  was  based  on  this  statement  of 
facts.  The  complainant  derived  all  its  trade  rights  in 
and  to  a  proprietary  medicine  styled  "Atwood's  Genuine 
Physical  Jaundice  Bitters"  from  its  original  manufac- 
turer, Moses  Atwood,  who  lived  at  Georgetown,  Massa- 
chusetts, and  manufactured  it  there.  The  court  says: 
"It  is  not  honest  to  state  that  a  medicine  is  manufac- 
ured  by  Moses  Atwood,  of  Georgetown,  Massachusetts, 
when  it  is  manufactured  by  the  Manhattan  Medicine 
Company,  in  the  city  of  New  York."^^  On  these  facts 
the  protection  of  their  mark  was  refused  complainants. 

§  36.  The  similar  cases— Assignment  must  be  made 
public  in  conjunction  with  the  trademark,  when.— Fol- 
lowing Manliattan  Medicine  Co.  v.  Wood,  the  Court  of 
Apj)eals  of  ]\Iaryland  held''-'  where  the  label  used  by 
the  manufacturers  of  Angostura  Bitters  did  not  disclose 
the  death  of  Dr.  J.  G.  B.  Siegert,  their  originator,  that 
the  label  was  not  truthful  and  its  infringement  would 
not  be  enjoined.  And  the  same  rule  has  been  applied 
as  against  one  continuing  to  use  the  name  of  a  prede- 
cessor in  business,  whose  label  does  not  announce  the 
change.-^    The  rule  in  this  regard  is  held  by  McKenna, 

17— Ba?  par(!e  Martin,  89  Off.  Gaz.  19— Seigert    v.    Abbott    (1),    61 

2259.     "A   word   to   be  used   as   a  Md.    276.       The   same   doctrine   is 

trademark      must     obviously      be  followed  in  Sherwood  v.  Andrews, 

meaningless     as     applied     to     the  5  Am.  L.  Reg.  N.  S.  588;  Seb.  263: 

goods,  so  as  to  be  neither  descrip-  Stachelberg  v.  Ponce,  23  Fed.  Rep. 

tive   nor  deceptive."     Duell,   Com-  430;   Price  &  Steuart,  967. 

missioner,  in  Ex  parte  Pearson  To-  20— Helmbold  v.  H.  T.  Helmbold 

bacco  Co.,  85  Off.  Gaz.  287.  Mfg.  Co.,  53  How.  Pr.  453. 

18 — Manhattan   Medicine  Co.    v. 
Wood,  108  U.  S.  218. 


"^2  HOPKINS   ON    TRADEMARKS.  [§37 

J.,  to  be  that  where  a  trademark  is  a  mark  of  special 
qualities,  due  to  superior  material,  processes,  skill  and 
care  exercised  by  the  originator  thereof,  an  assignee  of 
the  business  who  continues  to  use  labels  which  contain 
the  false  statement  that  the  goods  are  being  prepared  bv 
the  originator  is  not  entitled  to  equitable  relief  against 
an  infringer. 2^ 

§37.  Unauthorized  use  of  words  "patent"  or  "pat- 
ented."—The  use  of  the  words  "patent"  or  ''patented," 
in  connection  with  or  as  part  of  a  trademark,  where  the 
article  identified  by  the  mark  is  in  fact  not  covered  by 
letters  patent,  has  given  rise  to  many  interesting  de- 
cisions. All  of  these  matters  of  untruthful  representa- 
tion are  to  be  tested  by  the  question  of  whether  or  not 
they  are  direct,  or  "purely  collateral"  misrepresenta- 
tions.-2  Where  the  letters  patent  of  the  United  States 
covering  an  alleged  improvement  in  jars  had  been  de- 
clared invalid  by  judicial  decision,  but  the  manufacturer 
continued  to  designate  the  jars  "Mason's  Patent"  jars, 
it  was  held  that  the  fact  deprived  the  manufacturer  of 
equitable  relief  against  an  infringement.^^     In  England 

21 — Alaska  Packers'  Association  R.    311;    Cox,    Manual,    C84.       In 

V.  Alaska  Imp.  Co.,  60  Fed.   Rep.  this  case  tlie  false  use  of  the  word 

103.     The  supreme  court  of  Penn-  "patentee,"  used  by  the  complain- 

sylvania  has    held    the    contrary,  ant  in  advertisements,  was  held  to 

saying  that  an  assignee  is  entitled  be   a   collateral   misrepresentation 

to  relief,  even  though  he  has  not  which  did  not  disentitle  him  to  a 

designated  himself  as  assignee  in  remedy  in  equity  against  an  infrin- 

making  use  of  the  mark.     Fulton  ger. 

V.  Sellers,  4  Brewst.  42.     The  ten-         23— Consolidated   Fruit   Jar   Co. 

dency  of  the  later  rulings  is  to  up-  v.  Dorflinger,  Fed.  Case  No.  3129; 

hold  the  use  of  the  mark  by  the  6   Fed.    Cas.   339;    2   Am.   Law  T. 

asignee,   except  where  his  failure  Rep.  N.  S.  511;  Cox,  Manual,  444. 

to  disclose  the  fact  of  the  assign-  The    same    rule    is   announced    in 

ment  is   equivalent    to    misrepre-  England   in  Leather  Cloth   Co.   v. 

sentation  and  falsehood.  See  Pills-  Lorsont,  L.  R.  9  Eq.  345;  39  L.  J. 

bury  v.  Flour-mills    Co.,    64    Fed.  Ch.  86;   21  L.  T.  N.  S.  661;  18  W. 

Rep.  841-850,  12  C.  C.  A.  432.  R.    572;    Cox,   Manual,    Case    No. 

22— Ford  v.  Foster,  L.  R.  7  Ch.  324;   Nixey  v.  Roffey,  W.  N.  1870, 

D.  611;  27  L.  T.  N.  S.  220;  20  W.  p.  227;  Cox,  Manual,  Case  No.  343. 


§  37]  WHAT    CONSTITUTES   A    VALID   TRADEMARK.  73 

a  plaintiff  used  on  his  label  the  words  "Royal  letters 
patent,"  and  supported  the  use  of  the  words  by  showing 
that  for  many  years  he  had  paid  the  stamp  duty  on  "pat- 
ent medicines,"  and  was  only  using  the  labels  remaining 
on  hand  at  the  time  he  discovered  his  medicines  did  not 
belong  to  that  class,  lie  was  denied  an  injunction  against 
an  infringer  of  his  label.-* 

The  reason  for  the  particular  disfavor  witli  wliich 
equity  regards  this  class  of  cases  is  that,  by  using  words 
indicating  that  an  article  is  patented  where  it  is  not,  the 
owner  of  the  mark  is  seeking  to  obtain  the  benefits  of  a 
monopoly,  where  he  has  none.  As  stated  by  Vice-Chan- 
cellor  Wood,  in  Morgan  v.  McAdamr^  "x\ll  those  who  are 
induced  to  buy  these  crucibles  thus  described  as  '  Patent 
Plumbago  Crucibles  '  are  to  a  certain  extent  deceived, 
because  they  are  led  to  believe  that  the  article  is  pro- 
tected by  a  patent,  and  thus  may  be  induced  to  purchase 
it  from  the  plaintiff  under  the  belief  that  there  is  a  pat- 
ent, and  that  the  plaintiffs,  or  at  least  some  limited  num- 
ber of  persons,  are  the  only  persons  authorized  to  sell  it; 
and  further,  they  are  led  to  believe  that  if  they  should 
be  minded  to  set  up  any  manufactory  of  the  same  kind 
for  themselves,  they  would  be  unable  to  do  so  in  conse- 
quence of  the  plaintiffs  being  the  possessors,  either  by 
way  of  license  or  ownership,  of  a  patent  preventing  the 
world  at  large  from  imitating  the  article  which  is  sold 
by  them  under  this  particular  designation." 

And  although  in  another  English  case^^  a  plaintiff  was 
held  entitled  to  recover*  in  an  action  at  law  in  a  case  of 
this  kind,  where  his  father  had  held  a  patent  held  to  be 
invalid  (as  in  Consolidated  Fruit  Jar  Co.  v.  Dorfinger, 

24— Lamplough  v.  Balmer,  W.  N.  467;  22  L.  J.  Ch.  S66;  17  Jur.  368; 

1867.  p.  293.  1   W.   R.   213;    Cox,   Manual.  Case 

25—36  L.  J.  Ch.  228;  Cox,  Man-  No.  116. 
ual,   Case   No.    267.       Other  argu-         26— Sykes  v.  Sykes,  3  B.  &    Cr. 

ments  are  used  by  the  same  judge  541. 
In  Flavel  v.   Harrison,    10    Hare, 


74  HOPKINS  ON  TRADEMARKS.  [§  38 

supra,  where  the  contrary  rule  is  announced),  the  rule  is 
generally  that,  where  no  valid  patent  has  ever  existed, 
the  use  of  words  indicating  the  contrary  will  debar  the 
plaintiff  from  relief  in  equity.^^ 

Mr.  Justice  Fuller  has  accurately  defined  the  rule  un- 
der consideration  in  the  following  language:  "No  right 
to  a  trademark  which  includes  the  word  'patent',  and 
which  describes  the  article  as  'patented',  can  arise  when 
there  is  and  has  been  no  patent;  nor  is  the  claim  a  valid 
one  for  the  other  words  used,  when  it  is  based  upon  their 
use  in  connection  with  that  word."^^ 

But  where  there  has  been  a  valid  patent  upon  the  sub- 
ject-matter of  the  trademark,  different  issues  arise. 

In  England  it  has  been  held  that  the  fact  that  a  plain- 
tiff put  a  mark  upon  his  goods  with  the  addition  of  the 
words  ''trademark,"  when  his  mark  was  not  registered, 
did  not  amount  to  such  a  misrepresentation  as  to  deprive 
him  of  the  right  to  an  injunction,  because  the  use  of  the 
words  "trademark"  did  not  necessarily  carry  with  it 
the  implication  that  the  mark  had  been  registered.-^ 

§  38.  Use  of  such  word  as  a  trademark  where  there 
has  been  a  patent.— The  last  clause  of  Section  4901,  Ee- 
vised  Statutes  of  the  United  States,  declares  that  "ev- 
er}^ person  who  in  any  manner  marks  upon  or  affixes  to 
any  unpatented  article  the  w^ord  'patent',  or  any  word 
importing  that  the  same  is  patented,  for  the  purpose  of 
deceiving  the  public  shall  be  liable  for  every  such  of- 
fence to  a  penalty  of  not  less  than  $100,  with  costs;  one- 
half  of  said  penalty  to  the  person  who  shall  sue  for  the 
same,  and  the  other  to  the  use  of  the  United  States,  to 

27 — Leather  Cloth  Co.  v.  Ameri-  v.    Rahtjen's    American    Composi- 

can  Leather  Cloth  Co.,  11  Jur.  N,  tion  Co.,  183  U.  S.  1,  8,  46  L.  ed. 

S.  513;  Cox,  688;  11  H.  L.  C.  543;  49;    reversing  Rahtjen's   Composi- 

Cox,   Manual,  Case  No.  223.     See,  tion  Co.    v.    Holzapfel's   Composi- 

per   contra,    Stewart  v.    Smithson,  tion  Co.,  41  C.  C.  A.  329,  101  Fed. 

1  Hilt.  119;    Cox,  175.     This  case  Rep.  257. 
cannot  be  regarded  as  of  authority.         29 — Sen   Sen   Co.   v.   Britten,   L. 

28— Holzapfel's  Compositions  Co.  R.   (1899)   1  Ch.  D.  692. 


§  38]  WHAT    CONSTITUTES   A    VALID   TR.VDEMARK.  75 

be  recovered  by  suit  in  any  district  court  of  the  United 
States  witliin  wliose  jurisdiction  sucli  offense  may  liave 
been  committed."  It  is  not  an  offense  under  this  law  to 
affix  to  an  article  the  word  ''patented"  and  the  date  of 
an  expired  patent,  for  the  reason  that  the  offense  is  not 
complete  unless  the  mark  affixed  indicates  that  there 
is  a  present  subsisting  patent  upon  the  article.'^' 

In  Cheavin  v.  Walker,^^  Jessel,  M.  R.,  observes  with 
regard  to  the  effect  of  the  use  of  the  word  "patent"  by 
the  plaintiff:  ''The  question  was  fully  discussed  in  the 
case  in  the  House  of  Lords,  Leather  Cloth  Co.  v.  Ameri- 
can Leather  Cloth  Co.,  11  H.  L.  C.  543,^^  and  I  have  noth- 
ing to  add  to  what  was  there  said.  No  doubt  a  man  may 
use  the  word  'patent'  so  as  to  deceive  no  one.  It  may 
be  used  so  as  to  mean  that  which  was  a  patent,  but  is  not 
so  now.  In  other  words,  you  may  state  in  so  many  words, 
or  by  implication,  that  the  article  is  manufactured  in 
accordance  with  a  patent  which  has  expired.  But  if  you 
suggest  that  it  is  protected  by  an  existing  patent,  you 
cannot  obtain  the  protection  of  that  representation  as  a 
trademark.  Protection  only  extends  to  the  time  allowed 
by  the  statute  for  the  patent,  and  if  the  court  were  after- 
wards to  protect  the  use  of  the  word  as  a  trademark,  it 
would  be  in  fact  extending  the  time  for  protection  given 
by  the  statute.  It  is  therefore  impossible  to  allow  a  man 
who  has  once  had  the  protection  of  a  patent  to  obtain  a 
further  protection  by  using  the  name  of  his  patent  as  a 
trademark." 

"But,  further,  no  man  can  claim  a  trademark  in  a 
falsehood.  It  is  a  falsehood  to  represent  that  the  patent 
is  still  subsisting." 

And    Kekewich,     J.,     said    in    Re    Adams'    Trade- 

30— Wilson   V.    Singer  Mfg.   Co.,  92;   Seb.    528.       See    also  Nixey  v. 

12  Fed.  Rep.  57.  RofEey,   W.    N.   1870,   p.    227;    Seb. 

31— L.  R.  5  Ch.  D.  850;   46  L.  J.  343. 

Ch.   686;    36   L.   T.   938;    Cartmell,  Zl—Ante,  §  37. 


76  IIOPKIXS   ON    TRADEMARKS.  [§  38 

marks :^^  "The  word  'patent'  means  not  necessarily  that 
there  is  now  current  a  patent  of  protection,  but  that  the 
article  in  question  is  one  of  those  articles  which  had  the 
merits  of  utility  and  novelty,  and  therefore  received  the 
protection  of  the  crown  by  letters  patent." 

There  are  other  decisions,  however,  not  so  clear  as  to 
facts,  and  apparently  not  in  harmony  with  Cheavin  v. 
Walker,  supra.  Five  years  after  that  case.  Bacon,  V.  C, 
in  a  case  where  the  plaintiffs  had  stamped  the  word 
"patent"  on  plowshares  manufactured  by  them  after 
their  patent  had  expired,  said  "  (they)  make  their  shares 
according  to  the  invention  in  the  expired  patent,  as 
everybody  else  may;  but  to  suggest  that  they  have  in 
any  manner  claimed  anything  under  or  in  respect  to  that 
patent,  and  that  they  have  done  this  fraudulently  and  to 
deceive  the  public,  is  merely  desperate,  and  opposed  to 
the  truth  of  the  case."^^  Yet  it  does  not  appear  in  the 
report  wherein  this  differed  from  the  use  of  the  word 
"patent"  as  criticized  in  Cheavin  v.  Walker.  In  another 
case=^^  Vice-Chancellor  Wood  said:  "It  does  not  follow, 
because  upon  the  expiration  of  the  patent  the  article  and 
its  known  description  become  known  to  all,  that  there- 
fore all  would  become  entitled  to  use  the  label  by  which 
the  patentees  had  been  accustomed  to  distinguish  their 
goods. ' '  This  he  held  in  regard  to  a  label  used  on  pack- 
ages of  pins  marked  "  Taylor  &  Co.'s  Patent  Solid-headed 
Pins;"  the  manufacturer  continuing  to  use  the  label 
after  the  expiration  of  his  patent.  The  conclusion  of  the 
learned  Vice-Chancellor  was  that  "The  public  may  have 

33_9  R.  p.  c.  174;  66  L.  T.  610;  patent  have   ever   issued,  but  the 

Cartmell,  43.  exclusive  right  of  manufacture  of 

34 Ranscme  v.   Graham,   51  L.  baskets  has  been  secured  by  reg- 

J.  Ch.  897;  47  L.  T.  218;  Cartmell,  istration  of  their  design.     Cave  v. 

279.      Same   rule     in     Stewart    v.  Myers,  Seton   (5th  ed.),  539;   Cox, 

Smithson,   1   Hilt.   119;    Cox,  175;  Manual,  Case  No.  304. 

Leather  Cloth  Co.  v.  Hirschfeld,  1  35— Edelsten   v.   Vick,   11    Hare, 

N.  R.  551;   Cox,  Manual,  Case  No.  78;  1  Eq.  Rep.  413;  18  Jur.  7;  Cox, 

214.     And   even   where   no  letters  Manual,  Case  No.  119. 


§  :J8J  WLIAT    CONSTITUTES   A   V.U.ID   TRADEM.UtK.  77 

acquired  confidence  in  that  particular  label,  and  that  con- 
fidence may  have  given  a  value  to  it  which  the  patentees 
may  be  entitled  to  have  after  the  expiration  of  their 
patent. ' ' 

In  another  case  it  was  held  that  where  plaintiffs 
labeled  their  thread  "Patent  Thread,"  they  would  not 
be  denied  relief  against  an  infringer,  because  the  word 
*' patent"  by  long  usage  had  come  to  denote  the  char- 
acter of  the  thread,  and  did  not  imply  the  existence  of 
any  patent.'^" 

Of  course  the  holder  of  letters  patent  may  describe 
himself  as  ''patentee"  and  his  goods  as  "patented"  even 
where  he  doubts  the  validity  of  the  patent,  and  its  valid- 
ity has  been  questioned  by  others.''^  And  it  has  been  held 
in  New  York  that  one  who  applies  for  letters  patent  is 
not  disentitled  from  relief  against  an  infringer  by  reason 
of  his  describing  the  goods  as  "patented"  after  his  ap- 
plication had  been  filed,  but  before  the  issuance  of  letters 
j)atent.^^  Where  the  plaintiffs  used  their  label  bearing 
the  words  "specially  registered  trademark"  after  appli- 
cation, but  before  registration,  the  English  Court  of  Ap- 
peals granted  an  interlocutoiy  injunction  against  an  in- 
fringer, but  expressly  said  in  their  opinion  that  they  re- 
frained from  finally  deciding  the  question  whether  that 
misrepresentation  prima  facie  destroj'ed  plaintiff's  right 
to  protection.^^ 

It  will  be  seen,  therefore,  that  the  cases  discussed  in 
this  and  the  next  jTi'eceding  section  are  for  the  greater 
part  English,  and  their  reasoning  is  rather  confused. 
The  surest  conclusion  to  be  reached  by  an  examination 
of  the  cases  in  this  section  is  that  of  Lord  Kingsdown,  in 
Morgan  v.  McAdam:*^     "Of  course  it  would  be  better, 

36— Marshall   v.    Ross,    L.   R.    8  38— Lauferty     v.     Wheeler,     IG 

Eq.   651;    39  L.  J.   Ch.   225;    21  L.  How.  Pr.  488;   11  Daly.  194. 

T.  N.  S.  260;   17  W.  R.  1086;   Cox,  39— Read  v.  Richardson,  45  L.  T. 

Manual,  Case  No.  316.  54;   Cartmell,  281. 

37— Blakey  v.  Latham,  85  L.  T.  40—36  L.  J.  Ch.  228;    Cox,  Man- 

(Journal),   47.  ual.  No.  267. 


78  HOPKINS   ON    TRADEMARKS.  [§  39 

aud  those  wlio  are  inclined  to  act  with  scrupulous  hon- 
esty would  take  care,  to  put  the  date  of  their  patent, 
which  would  obviate  all  difficulty,  upon  the  articles 
which  they  designate  as  patented."  Judge  Kohlsaat,  in 
denying  a  motion  for  preliminary  injunction,  based  his 
decision  upon  the  fact  that  the  complainant,  though  not 
marking  the  article  itself  "patented,"  had  issued  circu- 
lars stating  that  it  was  patented,  after  the  patent  had  ex- 
pired."*^ 

One  who  issues  circulars  or  uses  markings  on  merchan- 
dise falsely  indicating  the  goods  dealt  in  by  him  to  have 
been  made  under  a  particular  patent  will  be  enjoined  at 
the  instance  of  the  owner  of  the  patent.^ ^  Y/here  there 
has  been  a  patent,  he  who  has  manufactured  a  trade- 
marked  article  under  the  patent  during  its  lifetime,  al- 
though he  has  lost  the  exclusive  right  to  the  use  of  the 
trademark  upon  the  expiration  of  the  patent,  may  yet  en- 
join one  from  using  the  mark  upon  an  article  not  made 
according  to  the  expired  patent.'*^  Where  the  complain- 
ant had  falsely  advertised  that  the  method  of  applying 
its  name  to  silk  dealt  in  by  it  was  patented,  a  preliminary 
injunction  against  an  infringer  was  refused  because  of 
the  misrepresentation.^^ 

§39.  Names  of  patented  articles.— The  general  rule 
as  to  the  name  applied  to  a  patented  article  during  the 
life  of  the  patent,  is  that  upon  the  expiration  of  the 
patent,  the  public  acquires  the  right  to  make,  use,  and 
sell  the  patented  article,  and  to  distinguish  it  by  the  name 
which  it  bore  during  the  life  of  the  patent.^^ 

41— Preservaline  Mfg.  Co.  V.  Hel-  Sterling  Silk  Co.,    (N.  J.  Ch.),  46 

ler   Chemical   Co.,   118   Fed.    Rep.  Atl.   Rep.  199. 

103.  45 — Fairbanks   v.    Jacobus,    Fed. 

42— Washburn  &  Moen  Mfg.  Co.  Case  No.   4608,    14    Blatchf.    337; 

V.  Haish,  Fed.  Case  No.  17217.  Singer  Mfg.  Co.  v.  Stanage,  6  Fed. 

43— Singer   Mfg.   Co.   v.   Hippie,  Rep.   279;     Adee  v.   Peck   Bros.   & 

109  Fed.  Rep.  1-52.  Co.,   37     Fed.     Rep.     209;     Singer 

44— Stirling    Silk    Mfg.    Co.    v.  Mfg.   Co.  v.  June,  163  U.   S.   169; 


§  39]  WHAT   CONSTITUTES  A   V.\1,ID   TRADEMARK.  79 

In  the  leading  case  upon  this  subject,  Mr.  Justice 
"White,  speaking  for  the  United  States  Supreme  Court, 
explained  the  reason  of  the  rule  as  follows:  "It  is  self- 
evident  that  on  the  expiration  of  a  i)atent  the  monoi)oly 
created  by  it  ceases  to  exist,  and  the  right  to  make  the 
thing  formerly  covei'ed  by  the  patent  becomes  public 
property.  It  is  upon  this  condition  that  the  patent  is 
granted.  It  follows,  as  a  matter  of  course,  that  on  the 
tennination  of  the  patent  there  passes  to  the  public  the 
right  to  make  the  machine  in  the  form  in  which  it  was 
constructed  during  the  patent.  We  may  therefore  dismiss 
without  further  conunent  the  complaint,  as  to  the  foi*m  in 
which  the  defendant  made  his  machines.  It  equally  fol- 
lows from  the  cessation  of  the  monopoly  and  the  falling 
of  the  patented  device  into  the  domain  of  things  public, 
that  along  with  the  public  ownership  of  the  device  there 
must  also  necessarily  pass  to  the  public  the  generic  desig- 
nation of  the  thing  which  has  arisen  during  the  monop- 
oly, in  "consequence  of  the  designation  having  been  ac- 
quiesced in  by  the  owner,  either  tacitly^  by  accepting  the 

Wilcox  &  Gibbs  S.  M.  Co.  v.  The  &  Ellis'  Trademark,  26  Ch.  D.  288; 

Gibbens  Frame,  17  Fed.  Rep.  623;  Singer  Mfg.   Co.  v.  June,  41  Fed. 

Singer    Mfg.    Co.    v.    Bent,   163    U.  Rep.  208;   Brill  v.  Singer  Mfg.  Co., 

S.  205;     Centaur  Co.  v.   Killenber-  41  Ohio  St.  127;    52  Am.  Rep.  74; 

ger,  87  Fed.  Rep.  725;  Singer  Mfg.  Hiram  Holt  Co.  v.  Wadsworth,  41 

Co.    V.    Larsen,    8    Biss.    151,    Fed.  Fed.   Rep.    34;     Coats    v.    Merrick 

Case  No.  12902;     Burton  v.  Strat-  Thread  Co.,  36  Fed.  Rep.  324;  Cen- 

ton,  12   Fed.   Rep.   696-700;     Good-  taur  Co.   v.   Heinsfurter,   84    Fed. 

year  Rubber  Co.  v.   Day,  22  Fed.  Rep.  955;    28  C.  C.  A.  581;   Loril- 

Rep.  44;    Singer  Mfg.  Co.  v.  Riley,  lard  v.  Pride,  28  Fed.    Rep.    434; 

11  Fed.  Rep.  706;    Wheeler  &  Wil-  Gaily  v.   Colt's   Patent  Fire  Arms 

son  Mfg.  Co.  V.  Shakespear,  39  L.  Mfg.  Co.,  30  Fed.  Rep.  118;  Dover 

J.   Ch.     36;     Tucker    Mfg.    Co.   v.  Stamping     Co.     v.     Fellows,     163 

Boyington,  Fed.  Cas.  No.  14229;    9  Mass.  191;    47  Am.   St.  Rep.    448: 

Off.  Gaz.   455;    Filley  v.  Child,  16  Centaur  Co.  v,  Robinson,  91  Fed. 

Blatchf.  376;     Fed.  Case  No.  4787;  Rep.  889;  Centaur  Co.  v.  Neathery, 

Ralph  V.  Taylor,  L.  R.  25  Ch.  D.  91  Fed.  Rep.   891;    Centaur  Co.  v. 

194;   Linoleum  Mfg.  Co.  v.  Nairn,  Hughes   Bros.   Mfg.   Co.,    91    Fed. 

7  Ch.  D.  834;  Young  v.  Macrae,  9  Rep.  901;  Centaur  Co.  v.  Marshall, 

Jur.  N.  S.  322;  Re  Palmer's  Trade-  97  Fed.  Rep.  785. 
mark,  24  Ch.  D.  504;  Re  Leonard 


so  HOPKINS   ON    TRADEMARKS.  [§39 

benefits  of  the  monopoly,  or  expressly,  by  his  having  so 
connected  the  name  with  the  machine  as  to  lend  comite- 
nance  to  the  resulting  dedication.  To  say  othei'wise 
would  be  to  hold  that,  although  the  public  had  acquired 
the  device  held  by  the  patent,  yet  the  owner  of  the  patent 
or  the  manufacturer  of  the  patented  thing  had  retained 
the  designated  name  which  was  essentially  necessary  to 
vest  the  public  with  the  full  enjojanent  of  that  which  has 
become  theirs  by  the  disappearance  of  the  monopoly. 
In  other  words,  that  the  patentee  or  manufacturer  could 
take  the  benefit  and  advantage  of  the  patent  upon  the 
condition  that  at  its  termination  the  monopoly  should 
cease,  and  yet  when  the  end  was  reached  disregard  the 
public  dedication  and  practically  perpetuate  indefinitely 
an  exclusive  right. 

''The  public  having  the  right  on  the  expiration  of  the 
patent  to  make  the  x>atented  article  and  to  use  its  generic 
name,  to  restrict  this  use,  either  by  preventing  its  being 
placed  upon  the  articles  when  manufactured,  or  by  using 
it  in  advertisements  or  circulars,  would  be  to  admit  the 
right  and  at  the  same  time  destroy  it.  It  follows,  then, 
that  the  right  to  use  the  name  in  every  form  passes  to  the 
public  with  the  dedication  resulting  from  the  expiration 
of  the  patent. 

''Xor  is  this  right  governed  by  different  principles 
where  the  name,  which  has  become  generic,  instead  of  be- 
ing an  arbitrary  one,  is  the  surname  of  the  patentee  or 
original  manf acturer.  "^^ 

There  appears  to  be  an  exception  to  this  general  rule 
where  the  use  of  the  name  antedates  the  existence  of  the 
patent,  and  where  it  further  appears  that  the  name  and 
not  the  patent  gave  its  value  to  the  article.^^ 

In  accordance  with  the  general  rule,  the  patent  office 
has  declined  to  register  a  trademark  which  is  the  name 

46— Singer  Mfg.  Co.  v.  June  Mfg.  47— Batcheller  v.  Thomson,  35 
Co.  163  U.  S.  169,  185;  41  L.  ed.  C.  C.  A.  532,  93  Fed.  Rep.  660,  665. 
118,  124. 


§  39]  WHAT    CONSTITUTES    A    VALID   TRADEMARK.  81 

of  a  patented  article/**  even  in  association  with  an  arbi- 
trary^ symbol."*^ 

It  is  by  no  means  clear  what  trademarks  applied  to 
patented  articles,  other  than  mere  names  or  words  de- 
scriptive of  the  thing  patented,  will  become  imhlici  juris 
upon  the  expiration  of  the  patent.  Thus  the  Supreme 
Court  of  Massachusetts  has  held  that  where  a  special 
word,  device  or  symbol  is  added  to  the  general  descrip- 
tive name  of  the  article  of  the  patent,  it  is  possible  that 
the  trademark  right  may  exist  in  the  combination  of  the 
word  and  the  device  or  sjTnbol,  notwithstanding  the  ex- 
piration of  the  patent.^*^ 

In  this  connection,  Lindley,  L.  J.,  says  ''I  do  not  mean 
to  say  that  a  manufacture!*  of  a  patented  article  cannot 
have  a  trademark  not  descriptive  of  the  patented  article, 
so  as  to  be  entitled  to  the  exclusive  use  of  that  mark  after 
the  patent  has  expired,  for  instance,  if  he  impressed 
upon  the  patented  articles  a  grifhn  or  some  other  device; 
but,  if  his  only  trademark  is  a  word  or  set  of  words  de- 
scriptive of  the  patented  article  of  which  he  is  the  only 
maker,  it  appears  to  me  to  be  impossible  for  him  ever  to 
make  out,  as  a  matter  of  fact,  that  this  mark  denotes  him 
as  the  maker,  as  distinguished  from  other  makers.  "^^ 

In  every  case  of  the  kind  under  considea*ation,  however, 
others  will  be  enjoined  from  using  the  mark  in  such  a  way 
as  to  deceive  the  public  into  the  false  belief  that  they 
are  getting  the  goods  of  the  original  owner  of  the  mark.^^ 

Thus  in  the  leading  case,  the  court  found  that  the 
Singer  Sewing  Machine  sold  by  the  defendant  after  the  ex- 
piration of  the  Singer  patent,  embodied  features  not  a 

48 — Ex.   p,   Velvril   Co.,  Ltd.   84  51— Re  Palmer's  Trademark,  L. 

Off.   Gaz.   807.  R.   24   Ch.  D.   504-521. 

49— Holophane  Glass  Co.  100  Off.  52— Singer   Mfg.    Co.   v.   Charle- 

Gaz.  450;   Ex  p.  Farnum  &  Co.  18  bois,   16  Rap.   Jud.   Q.  C.    S.    167; 

Off.   Gaz.   412.  Centaur  Co.  v.  Link,  62  N.  J.  Eq. 

50— Dover  Stamping  Co.  v.  Fel-  147,  49  Atl.  Rep.  828. 
lows,    163    Mass.    191,   47   Am.    St. 
Rep.  448. 
6 


82  HOPKINS  ON   TRADEMARKS.  [§39 

part  of  the  patented  article,  and  which  had  been  used  by 
the  complainant  to  indicate  itself  as  the  manufacturer  of 
the  machine;  and  Mr.  Justice  White  In  reversing  and  re- 
manding the  case  directed  a  decree  of  iujunction  in  favor 
of  the  complainant,  ''perpetually  enjoining  the  defend- 
ant, its  agents,  ser\'ants,  and  representatives,  first,  from 
using  the  word  'Singer'  or  any  equivalent  thereto,  in 
advertisements  in  relation  to  sewing  machines,  without 
clearly  and  unmistakably  stating  in  all  said  advertise- 
ments that  the  machines  are  made  ])y  the  defendant,  as 
distinguished  from  the  sewing  machines  made  by  the 
Singer  Manufacturing  Company,  second,  also  perpetually 
enjoining  the  defendant  from  marking  upon  sewing 
machines  or  upon  any  plate  or  device  -connected  there- 
with or  attached  thereto  the  word  'Singer,'  or  words 
or  letters  equivalent  thereto,  without  clearly  and  unmis- 
takably specifying  in  connection  therewith  that  such 
machines  are  the  product  of  the  defendant  or  other  manu- 
facturer, and  therefore  not  the  product  of  the  Singer 
Manufacturing  Company.  "^^ 

It  is  manifest,  however,  that  to  create  this  right  in  the 
public,  two  conditions  of  facts  are  prerequisite;  first, 
there  must  have  been  a  patent,  second,  the  patent  must 
have  expired. 

"Wliere  the  owner  of  the  trademark  had  made  an  un- 
successful application  for  a  patent  upon  the  article  to 
which  the  trademark  was  applied,  Bradley,  J.,  held  that 
he  had  a  valid  subsisting  right  to  the  trademark  upon  the 
rejection  of  his  application,  and  said  "His  failure  to 
establish  his  patent  (which  would  have  covered  all  his 
rights)  ought  not  to  preclude  him  from  falling  back  on 
his  right  to  the  trademark. '  '^'^ 

In  a  case  where  the  patent  had  not  expired,  Judge 
Vann,  speaking  for  the  Court  of  Appeals  of  New  York, 
said:    "Assuming  that  upon  the  expiration  of  the  patent 

53— Singer  Mfg.  Co.  v.  Bent,  163  54— Sawyer  v.  Kellogg,  7  Fed. 
U.  S.  169,  204,  41  L.  ed.  118,  131.        Rep.  720.  723. 


§40]  WHAT    CONSTITUTES   A   VALID   TRADEMARK.  83 

any  one  may  use  the  name,  until  tliat  time  arrives,  why 
should  the  inventor  be  deprived  of  a  right  which,  without 
question,  would  be  liis  if  lie  had  not  taken  out  a  patent 
for  his  invention."^"' 

Where  a  name  indicating  a  patented  article  exists,  an 
exclusive  licensee  for  the  sale  of  the  patented  articles  un- 
der a  license  to  which  the  defendant  is  not  a  party  cannot 
enjoin  him  from  conducting  an  unfair  competition  by 
means  of  the  name;  the  licensor  not  being  a  party  to  the 
action,  and  no  infringement  of  the  patent  being  charged, 
and  the  defendant  having  the  right  to  deal  in  the  articles 
known  by  the  name.^°    If  the  patent  is  reissued  the  trade- 
mark will  be  valid  during  the  life  of  the  reissued  patent.^^ 
§40.    Generic    term,    defined.— By    ''generic    term" 
(Latin,  genus,  gcncr;   French,  genre)   is  meant  a  term 
which  may  not  be  appropriated  as  a  trademark  because 
it  is  too  general  and  comprehensive  in  its  meaning  to  be- 
come the  monopoly  of  an  individal  in  application  to  mer- 
chandise.    The  word  in  its  proper  signification  includes 
the  use  of  geographical  names,  proper  names,  and  de- 
scriptive words,  used  in  commerce.    It  is  a  matter  of  re- 
gret   that   the   courts   have   not   defined   these    several 
phrases  in  their  relations  to  each  other,  but  such  is  the 
fact.    The  correctness  of  the  author's  definition  is  clearly 
established  by  analysis  of  the  three  classes  of  words  and 
the  reasons  why  they  are  not  sustained  as  trademarks. 
We  will  examine  them  in  their  order. 

(a)  Geographical  names.— Isir.  Justice  Strong  has  said 
"It  must  be  considered  as  a  sound  doctrine  that  no  one 
can  apply  the  name  of  a  district  or  country  to  a  well- 
known  article  of  commerce,  and  obtain  thereby  such  an 
exclusive  right  to  the  application  as  to  prevent  others  in- 

55 — Waterman  v.   Shipman,    130  versing   Seaman    v.   Johnson,    105 

N.  Y.  301,  reversing  s.  c.  8  N.   Y.  Fed.  Rep.  915. 

Supp.   814.  57 — Hiram    Holt    Co.    v.    Wads- 

56 — Johnson     v.      Seaman,     108  worth,  41  Fed.  Rep.  34. 
Fed.  Rep.  951,  48  C.  C.  A.  158;  re- 


84  HOPKINS   ON   TRADEMARKS.  [§40 

habiting  the  district,  or  dealing  in  similar  articles  com- 
ing from  the  district,  from  truthfully  using  the  same 
designation."^'^  In  our  further  examination  of  the  use 
of  geographical  names  in  trade,  we  will  find  that  they  are 
never  properly  sustained  as  technical  trademarks  except 
where  they  are  used  by  one  who  is  the  sole  owner  of  the 
entire  locality  to  which  the  name  is  applied.  In  such  a 
case  the  geographical  name  has  ceased  to  be  generic, 
because  one  person  has  the  sole  and  exclusive  Tight  of 
trade  or  manufacture  in  the  locality.  Thus  the  author 
reasons  that  geogi'aphical  names  are  ordinarily  generic, 
and  whenever  they  are  held  not  to  be  valid  trademarks 
it  is  because  they  are  generic. 

(h)  Proper  names.— The  eminent  English  barrister, 
Mr.  Sebastian,  has  said  in  his  work  on  trademarks  that 
"a  name  is  in  its  very  nature  generic,  and  is  properly  ap- 
plied to  designate,  not  one  individual  in  the  world,  but, 
it  may  be,  many  thousands,  to  all  of  whom  it  is  equally 
appropriate."^^ 

(c)  Descriptive  icords  have  always  been  understood  to 
come  within  the  category  of  generic  terms;  indeed,  Mr. 
Browne  in  his  treatise  upon  the  subject  has  defined  ''gen- 
eric names"  to  be  "names  merely  descriptive  of  an  ar- 
ticle of  trade,  of  its  qualities,  ingredients  or  character- 
istics."*^^ The  United  States  supreme  court  has  held 
that  there  can  be  no  technical  trademark  right  in  words 
used  to  denote  class,  grade,  style,  quality,  ingredients  or 
characteristics.^^ 

It  is  apparent,  therefore,  that  the  definition  of  generic 
terms  which  we  have  adopted  is  scientifically  exact,  in- 
cluding nothing  more  nor  less  than  the  words  which  are 
not  subject  to  exclusive  appropriation  as  trademark,  be- 

58 — Delaware    &   Hudson    Canal  GO— Browne  on  Trademarks   (2d 

Co.  V.  Clark,  13  Wall.   (80  U.  S.)  ed.),  sec.  134. 

311-327.  61— Canal  Co.  v.  Clark,  13  Wall. 

59— Sebastian    on     Trademarks  311-322;  Lawrence  Mfg.  Co.  v.  Ten- 

(4tli  ed.),  p.  23.  nessee  Mfg.  Co.,  138  U.  S.  537-548. 


§  40]  WHAT    CONSTITUTES   A   V.VLID   TRADEMARK.  85 

cause  they  cannot  be  so  appropriated  '*to  the  advance- 
ment of  the  business  interests  of  any  particular  indi- 
vidual, firm  or  company.  The  inability  to  make  such 
appropriation  of  them  arises  out  of  the  circumstance 
that,  on  account  of  their  general  or  popular  use,  every 
individual  in  the  conmmnity  has  an  equal  right  to  use 
them,  and  that  right  is  in  all  cases  paramount  to  the 
rights  and  interests  of  any  person.  "*^- 

A  generic  or  descriptive  word  cannot  be  made  a  valid 
tcademark  by  misspelling  it  (as,  for  example,  ''Kid  Nee 
Kure,"  applied  to  a  medicine), ^^  or  by  printing  it  in 
letters  from  the  alphabet  of  a  foreign  language/^^ 

Thus  the  word  ''Koachsault,"  applied  to  a  preparation 
for  destroying  roaches,  has  been  held  invalid  as  a  trade- 
mark.''^ 

It  must  not  be  inferred,  however,  that  words  in  com- 
mon use  cannot  be  appropriated  as  trademarks.  They 
certainly  can  be  so  appropriated  if  used  in  a  new  and 
distinctive  sense.  If  any  other  rule  obtained,  no  words 
could  be  used  as  trademarks  unless  the  person  adopting 
them  was  their  original  and  first  inventor.  There  is  no 
such  legal  requirement  either  as  to  words  or  devices.^® 
''Words  in  common  use  may  be  adopted,  if  at  the  time  of 
adoption  they  were  not  used  to  designate  the  same  or 
similar  articles  of  production.  "^^ 

It  is  obvious  that  the  article  to  which  the  mark  is  ap- 
plied must  be  considered  in  this  connection.  As  Judge 
"Wallace  has  put  it,  "whether  a  word  claimed  as  a  trade- 
mark is  available  because  it  is  a  fanciful  or  arbitrary 
name,  or  whether  it  is  obnoxious  to  the  objection  of  being 
descriptive,  must  depend  upon  the  circumstances  of  each 

62 — Daniels,   J.,    in    Newman    v.  65 — Barrett     Chemical     Co.     v. 

Alvord.  49  Barb.  588;   Cox,  404.  Stern,  176  N.  Y.  27,  68  N.  E.  Rep. 

63— Bj-  parte  Henderson,  85  Off.  65,  reversing  76  N.  Y.  Supp.  1009. 

Gaz.  453.  G6— Osgood  v.  Allen,    1  Holmes, 

M—Ex  parte    Stuhmer,    86  Ofif.  185,  Fed.  Case  No.  10603. 

Gaz.  181.  67 — Osgood  v.  Allen,  supra, 


S6  HOPKINS   ON   TRADEMARKS.  [§40 

case.     The  word  which  would  be  fanciful  or  arbitrary 
when  applied  to  one  article  may  be  descriptive  when  ap- 
plied to  another.  If  it  is  so  apt  and  legitimately  significant 
of  some  quality  of  the  article  to  which  it  is  sought  to  be 
applied  that  its  exclusive  concession  to  one  person  would 
tend  to  restrict  others  from  properly  describing  their 
own  similar  articles,  it  cannot  be  the  subject  of  a  monop- 
oly.    On  the  other  hand,  if  it  is  merely  suggestive,  or 
figurative  only,  it  may  be  a  good  trademark,  notwith- 
standing it  is  also  indirectly  or  remotely  descriptive.  "p» 
While  the  following  is  an  extract  from  a  judicial  argu- 
ment delivered  by  a  court  in  a  futile  attempt  to  justify 
its  decree  sustaining  as  a  trademark  a  geographical  word 
to  which  the  plaintiff  had  no  color  of  exclusive  right, 
it  is  still  a  lucid  exposition  of  the  principle  under  con- 
sideration: ''Words  and  names  having  a  known  or  estab- 
lished signification  cannot  within    the    limits    of    such 
specification  be  exclusively  appropriated  to  the  advance- 
ment of  the  business  purposes  of  any    particular   indi- 
vidual, firm  or  company.     The  inability  to  make  such 
appropriation  of  them  arises  out  of    the    circumstance 
that  on  account  of  their  general  or  popular  use  every 
individual  in  the  community  has  an  equal  right  to  use 
them,  and  that  right  is  in  all  cases  paramount  to  the 
rights  and  interests  of  any  one  person,  firm  or  company. 
What  alike  may  be  claimed  and  used  by  all  cannot  be 
exclusively  appropriated  to  advance  the  interests  of  any 
person.    Numerous  cases  have  been  before  the  courts  in 
which  this  limitation  upon  the  use  of  words  and  names 
as  trademarks  has  been  maintained  and  established,  and 
no  good  reason  can  be  given  for  questioning  or  impeach- 
ing their  conclusions.     But  while  this  limitation  is  en- 
tirely reasonable,  there  can  be  no  propriety  in  extending 
it  beyond  the  circumstance  upon  which  it  is  founded;  and 
accordingly  any  member  of  the  community  whose  inter- 

68— Bennett  v.  McKinley,  65  Fed.   Rep.  505,  13  C.  C.  A.  25. 


§  41]  WHAT    CONSTITUTES   A    VALID   TRADEMARK.  87 

ests  and  business  may  be  i/romoted  by  doing  so,  should  be 
at  liberty  to  apply  even  names  and  words  in  common  use 
to  the  products  of  his  industry,  in  such  a  manner  as  to 
indicate  their  origin  or  particular  manufacture,  where 
such  application  will  not  intrench  upon  and  be  in  no  way 
included  in  their  use  by  the  public.  By  doijig  so,  the 
rights  of  no  member  of  the  community  can  be  in  any 
manner  infringed,  and  no  public  inconvenience  whatever 
can  be  occasioned  by  it.  The  public  will  still  be  left  at 
full  liberty  to  use  such  words  or  terms  as  they  were  used 
before;  while  for  a  special  purpose  a  new  office  or  purpose 
may  be  imposed  upon  them. 

*'In  cases  of  that  description  no  greater  inconvenience 
or  embarrassment  can  be  found  in  jjrotecting  parties  in 
the  enjoyment  of  the  new  use  or  purpose  engrafted  upon 
a  popular  tenn  than  has  been  found  in  extending  that 
protection  to  the  case  of  a  word  created  for  the  occa- 
sion."^ 

§  41.  Illustrations  of  generic  terms.— In  the  following 
instances  the  words  and  marks  mentioned  have  been  held 
to  be  invalid  as  trademarks  because  generic;  being  geo- 
graphical or  descriptive.  The  examples  are  arranged  in 
alphabetical  order  for  convenient  reference. 

''A.  C.  A.,"  cloth;-  **Acid  Phosphate,"  medicinal  prep- 
aration;^ ''Allcock's  Porous  Plasters,"  medicated  plas- 
ters;^ ** Aluminum,"  Washboards;^  ''Ammoniated  Bone 
Superphosphate  of  Lime,"  fertilizer;^  ''Anglo-Portugo," 
oysters  ;^  * '  Angostura, ' '  bitters  f  '  *  American, ' '  sardines  f 

1— Newman  v.  Alvord,  49   Barb.  Saginaw   Mfg.    Co.,   103   Fed.   Rep. 

588.  281;    43  C.  C.  A.  233. 

2— Amoskeag  Mfg.  Co.  v.  Train-  6— Alleghany    Fertilizer    Co.    v. 

er.  101  U.  S.  51.  Woodside.    1    Hughes.     115,     Fed. 

3— Rumford     Chem.     Works     v.  Case  No.  206. 

Muth,  35  Fed.  Rep.  524.  7— Re  Saunion  &  Co.,  Seb.  625; 

4— Re  Brandreth,  L.  R.  9  Ch.  D.  Cox,  Manual,  625. 

618.  8— Siegert  v.  Findlater,  L.  R.   7 

5— American   Washboard   Co.    /.  Ch.  D.  801;  Siegert  v.  Abbott  (2), 


HOPKINS   ON   TRADEMxVRKS. 


[§41 


*' Antiquarian,"  book-store;^"  "Apple  and  Honey,"  med- 
ieine;^^  ''Asbestos,"  AVall  plaster;^-  "Astral,"  oil;^' 
"Balm  of  Thousand  Flowers,"  cosmetic  1^=^  "Barber's 
Model,"  razors i^'^  "Bazaar,"  patterns  for  clothing ;^^ 
"Better  Than  Mother's,"  mince  meat;^«  "Black 
Package,"  tea;^»  "Book,"  the  device  of  a  book,  used 
by  a  publisher r°  "Borax,"  soapr^  "Braided  Fixed 
Stars,"  cigar  lights;--  "Cachemire  Milano,"  fabric;-"* 
"California  Syrup  of  Figs,"  laxative  medicine ;2-*  "C.  A. 
P.,"  cream  acid  phosphate;-^  "Castoria,"  medicine ;2« 
"Celebrated  Stomach  Bitters,"  bitters ;27  "Cellular," 
cloth  of  cellular  construction ;28  "Centennial,"  medals ;29 


79  N.  Y.  Sup.  Ct.  243.  But  see, 
contra,  A.  Bauer  &  Co.  v.  Siegert, 
56  C.  C.  A.  487,  120  Fed.  Rep.  81, 
84. 

9 — Re  American  Sardine  Co.,  3 
Off.  Gaz.  495. 

10 — Choynski  v.  Cohen,  39  Cal, 
501. 

11 — Ex  parte  G.  F.  Heublein  & 
Bro.,   87  Off.   Gaz.  179. 

12 — Asbestos  &  Asbetic  Co.  v. 
Wm.  Sclater  Co.,  18  Rap.  Jud.  Que. 
C.   S.   360. 

13— Pratt's  Mfg.  Co.  v.  Astral  Re- 
fining Co.,  27  Fed.  Rep.  492-494. 

15 — Fetridge  v.  Wells,  Cox,  Am. 
Tr.  Cas.  180. 

16 — Ex  parte  Krusius  Bros.,  82 
Off.  Gaz.  1687. 

17— McCall  V.  Theal,  28  Grant 
(Up.  Can.)    Ch.  48. 

18 — Ex  parte  Ervin  A.  Rice  Co., 
83  Off.  Gaz.  1207. 

19— Fischer  v.  Blank,  138  N.  Y. 
244. 

20 — Merriam  v.  Famous  Shoe  & 
Clothing  Co.,  47  Fed.  Rep.   411. 

21 — Dreydoppel  v.  Young,  14 
Phila.   226. 

22— Re  Palmer,  L.  R.  24  Ch.  D. 
504. 

23— Re  Warburg.  13  Off.  Gaz.  44. 


24 — Worden  &  Co.  v.  California 
Fig  Syrup  Co.,  187  U.  S.  515;  Cali- 
fornia Fig  Syrup  Co.  v.  Putnam, 
66  Fed.  Rep.  50;  California 
Fig  Syrup  Co.  v.  Stearns,  67 
Fed.  Rep.  1008;  s.  c.  on  appeal, 
73  Fed.  Rep.  812;  Re  California 
Fig  Syrup  Co.,  L.  R.  40  Ch.  D.  620. 
Contra,  see  California  Fig  Syrup 
Co.  V.  Improved  Fig  Syrup  Co.,  51 
Fed.  Rep.  296;  Improved  Fig 
Syrup  Co.  v.  California  Fig  Syrup 
Co.,  54  Fed.  Rep.  175;  California 
Fig  Syrup  Co.  v.  Worden,  86  Fed. 
Rep.  212;  s.  c,  95  Fed.  Rep.  132. 

25 — Provident  Chemical  Works 
V.  Canada  Chemical  Mfg.  Co.,  2 
Ont.  Law.  Rep.  182. 

26 — Centaur  Co.  v.  Robinson,  91 
Fed.  Rep.  889;  Centaur  Co.  v. 
Neathery,  34  C.  C.  A.  118,  91  Fed. 
Rep.  891;  Centaur  Co.  v.  Hughes 
Bros.  Mfg.  Co.,  34  C.  C.  A.  127,  91 
Fed.  Rep.  901.  Centaur  Co.  v.  Link, 
62  N.  J.  Eq.  147,  49  Atl.  Rep.  828. 
27 — Hostetter  v.  Adams,  20 
Blatchf.  326. 

28— Cellular  Clothing  Co.  v. 
Maxton,  L.  R.    (1899)    A.   C.   326. 

29— Hartwell  v.  Viney,  Fed.  Case 
No.  6158. 


§41] 


WHAT    CONSTITUTES    A    VALID   TRADEMARK, 


89 


'' Cherry  Pectoral,"  medicine ;3o  ''Chill  Stop,"  medi- 
cine;^^  ''Chlorodyne,"  medicinal  compound  ;^2  <<ciub 
House,"  gin;=^^  "Computing,"  scales ;»''  "Continental," 
sought  to  be  protected  from  infringement  as  the  name  of 
a  fire  insurance  corporation;''^  "Copenhagen,"  snuff ;•''<* 
"Cough  Remedy,"  cough  medicine;^"  "Crack  Proof," 
rubber ;3«  "Cramp  Cure,"  medicine j^'-^  "Cream,"  yeast ;-'^ 
"Cresylic,"  ointment ;-'^  "Croup  Tincture,"  medicine ;"*2 
"Crystallized  Egg,"  for  a  preparation  of  eggmeat;" 
"Cylinder,"  glass  products.-*-* 

"Desiccated,"  codfish;-*^  "Druggists'  Sundries," 
cigars;'*'^  "Dry  Monopole,"  champagne;^"  "Durham," 
tobacco.^^ 

"Egg,"  macaroni  i'*^  "Elastic  Seam,"  drawers -"^^ 
"Elgin,"  watches ;^^  "Emolliorum,"  waterproof  dress- 
ing for  leather;'^-  "Encyclopedia  Britannica,"  title  of  an 


30 — Ayers  v.  Rushton,  7  Daly,  9. 

31 — Ex  parte  Hance  Bros.  & 
White,  87  Off.  Gaz.  698. 

32 — Browne  v.  Freeman  (1),  12 
W.  R.  305;  Seb.  230;  Cox,  Manual, 
230;  Browne  v.  Freeman  (2),  Seb. 
424;   Cox,  Manual,  424. 

33 — Corwin  v.   Daly,  7  Bos.  222. 

34 — Computing  Scale  Co.  v. 
Standard  Computing  Scale  Co.  55 
C.  C.  A.  459.  118  Fed.  Rep.  9t)o. 

35 — Continental  Ins.  Co.  v.  Con- 
tinental Fire  Ass'n,  96  Fed.  Rep. 
846;  affirmed,  41  C.  C.  A.,  326,  101 
Fed.  Rep.  255. 

36 — Weyman  v.  Soderberg,  108 
Fed.  Rep.  63. 

37— Gillman  v.  Hunnewell,  122 
Mass.  139. 

38— Re  Goodyear  Rubber  Co.  11 
Off.   Gaz.   1062. 

39— L.  H.  Harris  Drug  Co.  v. 
Stucky,  46  Fed.  Rep.  624. 

40 — Gillett  V.  Lumsden,  4  Ont. 
Law  Rep.  300. 


41 — Carbolic  Soap  Co.  v.  Thomp- 
son, 25  Fed.  Rep.  625. 

42— Re  Roach,  10  Off.  Gaz.  333. 

43 — Lamont  v.  Leedy,  88  Fed. 
Rep.  72. 

44 — Stokes  v.  Landgraff,  17 
Barb.  608;   Cox,  Am.  Tr.  Cas.  137. 

45 — Town  V.  Stetson,  4  Abb.  Pr. 
N.  S.  218;  3  Daly,  53;  Cox,  Am. 
Tr.  Cas.  514. 

46— ^x  parte  Cohn  (2),  16  Off. 
Gaz.  680. 

47 — Richards  v.  Butcher,  L.  R. 
(1891)    2  Ch.   522. 

48— Blackwell  v.  Wright,  73  N. 
C.  310. 

49— Re  Dole  Bros.,  12  Off.  Gaz. 
939. 

50— Scriven  v.  North,  124  Fed. 
Rep.  894,  896. 

51 — Illinois  Watch  Case  Co.  v. 
Elgin  Nat.  W^atch  Co.,  94  Fed.  Rep. 
667;  reversing  s.  c,  89  Fed.  Rep. 
487. 

52— Re  Talbot,  8  R.  P.  C.  149. 


90 


HOPKINS   ON   TRADEMARKS. 


:§4i 


encyclopedia;^^  ''Evaporated,"  food  products ;'^^  ''Ever 
Ready,"  coffee  mills ;^°  "Extract  of  Night-Blooming 
Cereus,"  perfume.*^^ 

"Fairbank's  Patent,"  scales ;^^  "Famous,"  stoves ;^^ 
"Favorite,"  letter-file ;'''''  " Ferro-phospliorated  Elixir  of 
Calisaya  Bark,"  medicine  ;*'°  "Fire-proof,"  oil;^^ 
"Flinch,"  unpatented  game  so  named  by  the  inventor ;®2 
"French,"  paints;*'^  "French  Tissue,"  medicated 
paper ;^'*  "Fruit,"  vinegar.^-''' 

"Galen,"  manufactured  glass ;^^  "Gibraltar,"  lamp 
chimneys ;*^^  "Glendon,"  iron;*'^  "Golden,"  ointment ;^^ 
"Gold  Label,"  bread ;^«  "Gold  Medal,"  saleratus;'i 
"Goodyear  Rubber  Co.,"  as  name  for  rubber  manufac- 
turing house;"-  "Granite,"  enameled  kitchen  utensils ;'^-'^ 
"Granolithic,"  artificial  stone ;^'*  "Granulated  Dirt-Kil- 
ler," soap;'^'^  "Greatest  value  for  the  money,"  shoes;'''® 


53— Black  v.  Ehrich,  44  Fed. 
Rep.  793. 

54— Re  Alden,  15  Off.  Gaz.  389. 

55 — Ex  parte  Bronson  Co.,  87 
Off.  Gaz.  1782. 

56— Phalon  v.  Wright,  5  Phila. 
464;    Cox,  Manual,  232. 

57 — Fairbanks  v.  Jacobus,  14 
Blatch.    337,    Fed.    Case    No.    4608. 

58 — Ex  parte  Brand  Stove  Co., 
62  Off.  Gaz.  588. 

59— Cook  &  Cobb  Co.  v.  Miller, 
65  N.  Y.  Supp.  730. 

60 — Caswell  v.  Davis,  58  N.  Y. 
223;    17  Amer.  Rep.  223. 

61— Scott  V.  Standard  Oil  Co., 
106  Ala.  475;  31  L.  R.  A.  374;  19 
So.  Rep.  71. 

62— H.  B.  Chaffee  Co.  v.  Selchow, 
131  Fed.  Rep.  543. 

63 — Ex  parte  Marsching  &  Co., 
15  Off.  Gaz.   294. 

64— Draper  v.  Skerrett  (2),  116 
Fed.  Rep.  206,  208. 

65 — Alden  v.  Gross,  25  Mo.  App. 
123. 


66 — Stokes  v.  Landgraff,  17 
Barb.  608;    Cox,  Am.  Tr.  Cas.  137. 

67 — Ex  parte  Nave  &  McCord 
Merc.   Co.,  86  Off.  Gaz.   1985. 

68 — Glendon  Iron  Co.  v.  Uhler, 
75  Pa.  St.  467;  15  Amer.  Rep.  599. 

69— Green  v.  Rooke,  W.  N. 
1872,  p.   49. 

70— Ex  parte  Stuhmer,  86  Off. 
Gaz.  181. 

71— Taylor  v.  Gillies,  59  N.  Y. 
331. 

72 — Goodyear's  India  Rubber 
Glove  Mfg.  Co.  V.  Goodyear  Rubber 
Co.,  128  U.  S.  598;  reversing  s.  c, 
21  Fed.  Rep.  276. 

73 — St.  Louis  Stamping  Co.  v. 
Piper,  33  N.  Y.  Supp.  443. 

74— Stuart  &  Co.  v.  Scottish  Val 
de  Travers  Paving  Co.,  Ct  Sess. 
Cas.    (4th  ser.)    13,  1. 

75 — Ex  parte  Waeferling,  16  Off. 
Gaz.  764. 

76 — Ex  parte  Parker,  Holmes  & 
Co.,  85  Off.  Gaz.  287. 


§41] 


WHAT    CONSTITUTES   A    V.VLID   TRADEMARK. 


91 


"Greeu  Mountain,"  grapes ;^'^  ** Guaranteed,"  corset;'* 
''Guentlier's  Best,"  flour ;''^  "Gyrator,"  bolting  ma- 
chines.^*^ 

''Hand  Grenade,"  fire  extinguisher;^  "Hamburg," 
tea;-  ** Harvey's  Sauce,"  condiment;'  "Headache  Waf- 
ers," medicinal  compound ;■*  "Health  Food,"  cereal  prod- 
ucts and  prepared  foods;"'  "Health  Preserving,"  corsets;*' 
"Highly  Concentrated  Compound  Fluid  Extract  of 
Buchu,"  medicine;'^  "Holbrook's,"  school  apparatus;^ 
"Homoeopathic  Medicines,"  description  of  articles  so 
called;"  "Hydro-Bromo  Soda  Mint,"  medicine;^''  "Hy- 
gienic," underwear.^* 

"Imperial,"  beer;^-  "Indurated  Fibre,"  wood-j^ulp 
products;''  "Instantaneous,"  tapioca  prepared  for 
speedy  cooking;'^  "International  Banking  Co,"  as  name 
of  banking  concern ;^'*  "Iron  Bitters,"  bitters  containing 
iron;"'  "Ironstone,"  water  pipe.*' 


77— Hoyt  V.  J.  T.  Lovett  Co.,  71 
Fed.  Rep.  173;  17  C.  C.  A.  652;  31 
L.  R.  A.  44;  39  U.  S.  App.  1. 

78 — Symington  v.  Footman,  56 
L.  T.  N.  S.  696. 

79 — Ex  parte  Guenther  Milling 
Co.,  86  Off.  Gaz.  1986. 

SO— Ex  parte  Wolf,  80  Off.  Gaz. 
1271. 

1 — Re  Harden  Fire  Extinguisher 
Co.'s  Trademark,  55  L.  J.  Ch.  596. 

2— Frese  v.  Bachof,  14  Blatchf. 
432,  Fed.  Case  No.  5110. 

3— Lazenby  v.  White,  41  L.  J. 
Ch.  354. 

4— Gessler  v.  Grieb,  80  Wis.  21: 
27  Am.  St.  Rep.  20;  48  N.  W.  Rep. 
1098. 

5— Fuller  v.  Huff,  99  Fed.  Rep. 
439  (Reversed  by  Fuller  v.  Huff. 
43  C.  C.  A.  453,  104  Fed.  Rep.  141). 

6— Ball  V.  Siegel,  166  111.  137. 

7— Helmbold  v.  Helmbold  Mfg. 
Co..  53  How.  Pr.  453. 

8 — Sherwood  v.  Andrews,  3  Am. 


Law  Reg.  N.  S.  588. 

9 — Humphrey's  Spec.  Homoeo- 
pathic Med.  Co.  V.  Wenz,  14  Fed. 
Rep.  250. 

10— Ex  parte  Spayd,  86  Off.  Gaz. 
631. 

11 — Jaros  Hygienic  Underwear 
Co.  V.  Fleece  Hygienic  Underwear 
Co.,  60  Fed.  Rep.  622;  s.  c,  65  Fed. 
R^p.  424. 

12 — Beadleston  &  Woerz  v. 
Cooke  Brewing  Co.,  20  C.  C.  A- 
405;  74  Fed.  Rep.  229. 

13 — Indurated  Fibre  Co.  v. 
Amoskeag  Indurated  Fibre  Ware 
Co.,  37  Fed.  Rep.  695. 

14 — Bennet  v.  McKinley,  65  Fed. 
Rep.  505;  13  C.  C.  A.  25. 

15— Kohler  v.  Sanders,  122  N.  Y. 
65;  affirming  s.  c,  48  Hun,  48. 

16 — Brown  Chem.  Co.  v.  Stearns, 
37  Fed.  Rep.  360;  Brown  Chem. 
Co.  V.  Meyer,  139  U.  S.  540;  Cox. 
Manual.  726. 

17— Re  Rader,  13  Off.  Gaz.  596. 


92 


HOPKINS   ON   TRADEMARKS. 


[§41 


''Johnson's  American  AnodjTie,"  liniment ;^^  ''Juli- 
enne," soup.^^ 

"Kaiser,"  beer;^"  ''Kentucky  Club,"  whiskey ;2i  ''Kid 
Nee  Kure, "--  "  Kidney  &  Liver, ' '  bitters.-^ 

"Lackawanna,"  coalp'*  "Lake,"  glass  product;-^  "La 
Normandie,"  cigars;-^  "Liebig's  Extract  of  Meat,"  meat 
extract  made  under  Liebig's  formula;-^  "Lieutenant 
James'  Horse  Blister,"  ointment;-^  "Linoleum,"  floor- 
cloth;-'^ "Loch  Katrine,"  whiskey.^^ 

"Magnolia,"  alloy  metal f  "Malted  Milk,"  infants' 
food;^-  "Marshall's  Celebrated,"  liniment ;^^  "Maryland 
Club  Rye,"  whiskey ;^^  "Masonic,"  cigars ;^^  "Matzoon," 
fermented    milk;^*^    "Medicated    Prunes,"    medicine f^ 


18— Re  Johnson,  2  Off.  Gaz.  315. 

19— Godillot  V.  Hazard,  81  N.  Y. 
263. 

20— Luyties  v.  Hollender,  30 
P''ed.  Rep.  632.  Per  contra,  see 
Kaiserbrauerei  v.  Baltz  Brewing 
Co..  71  Fed.  Rep.  695. 

21 — Davies  County  Distilling  Co. 
V.   Martinoni,   117  Fed.   Rep.  186. 

22— Ex  parte  Henderson,  85  Off, 
Gaz.  453. 

23— Spieker  v.  Lash,  102  Cal. 
38;  36  Pac.  Rep.  362. 

24 — Delaware  &  Hudson  Canal 
Co.  V.  Clark,  13  Wall.  311. 

25— Stokes  v.  Landgraff,  17 
Barb.  608;    Cox,  Am.  Tr.  Cas.  137. 

26— Stachelberg  v.  Ponce,  128  U. 
S.  686. 

27 — Liebig's  Extract  of  Meat  Co. 
(Ltd.)  V.  Hanbury,  17  L.  T.  N.  S. 
298;  Anderson  v.  Liebig's  Extract 
of  Meat  Co.  (Ltd.),  45  L.  T.  757; 
Cartmell,  47;  Liebig's  Extract  of 
Meat  Co.  v.  Libby,  McNeill  &  Lib- 
by,  103  Fed.  Rep.  87;  Liebig's  Ex- 
tract of  Meat  Co.  v.  Walker,  115 
Fed.  Rep.  822. 

28 — James  v,  James,  L.  R.  13  Eq. 


421;  41  L.  J.  Ch.  353;  26  L.  T.  N. 
S.  568;    20  W.  R.  434;    Seb.  388. 

29 — Linoleum  Mfg.  Co.  v.  Nairn, 
L.  R.  7  Ch.  D.  834;  47  L.  J.  Ch. 
430;  38  L.  T.  N.  S.  448;  26  W.  R. 
463;  Seb.  536. 

30— Bulloch,  Lade  &  Co.  v.  Gray, 
19  Jour.  Juris.  218;  Seb.  452. 

31 — Magnolia  Metal  Co.'s  Trade- 
marks, 66  L.  J.  Ch.  N.  S.  312. 

32 — Ex  parte  Horlick's  Food  Co., 
84  Off.  Gaz.  1870;  Horlick's  Food 
Co.  V.  Elgin  Milkine  Co.,  56  C. 
C.  A.  544,  120  Fed.  Rep.  264. 

33— Marshall  v.  Pinkham,  52 
Wis.    572. 

34 — Cahn  v.  Hoffman  House,  28 
N.  Y.  Supp.  388.  Contra,  see 
Cahn  V.  Gottschalk,  2  N.  Y.  Supp. 
13. 

35— ^a;  parte  Smith  (3),  16  Off. 
Gaz.  764. 

36 — Dadirrian  v.  Yacubian,  72 
Fed.  Rep.  1010;  Dadirrian  v.  Yacu- 
bian, (2),  90  Fed.  Rep.  812.  But 
see  Dr.  Dadirrian  &  Sons  Co.  v. 
Hauenstein,   74  N.  Y.   Supp.  709. 

37— ^o;  parte  Smith  (2),  16  Off. 
Gaz.  679. 


§41; 


WHAT   CONSTITUTES  A   V.VLID  TRADEMABK. 


93 


''Metallic  Clinton,"  paint ;='«  ''Microbe  Killer,"  antisep- 
tic;^^ "Moline,"  pIows;^«  "Montserrat,"  lime  juice.-*' 

"National  JSpenn,"  candles;^-  "Native  Guano,"  fer- 
tilizer;^'* "New  Manny,"  hai'vester;''^  "New  York,"  glass 
products ;^=  "Nourishing  London,"  stout.''" 

"Old  Bourbon,"  wliiskey;^^  "Old  Country,"  soap;^^ 
"Old  Innisliowen,"  whiskey;-*''  "Old  London  Dock," 
gin .50  << Olive,"  bicycles  having  olive-colored  frames.^' 

"Paraffin,"  oil;"  "Parcheesi,"  game,  invalid  because 
a  mere  variation  of  the  Hindoostanee  name  for  the  same 
game;^-*^  "Parson's  Purgative,"  pills ;^^  "Perfect  Face 
Paste,"  medicine ;^^  "Philadelphia,"  beer;'"  "Pocahon- 
tas," coal;'"'^  "Post  Office,"  direct(yry;-'«  "Porous,"  me- 
dicinal plasters ;'^»  "Prime  Leaf,"  lard;««  "Prize  Medal, 
1862,"  on  goods  sold  by  one  awarded  a  medal  at  the  Lon- 


38 — Clinton  Metallic  Paint  Co. 
V.  New  York  Metallic  Paint  Co.,  60 
N.  Y.  Supp.  437. 

39— Alff  V.  Radam,  77  Tex.  530. 

40 — Candee,  Swan  &  Deere  v. 
Deere  &  Co.,  54  111.  439;  5  Amer. 
Rep.  125. 

41 — Evans  v.  Von  Laer,  32  Fed. 
Rep.  153. 

42— Re  Price's  Patent  Candle 
Co.,  L.  R.  27  Ch.  D.  681. 

43 — Native  Guano  Co.  v.  Sew- 
age Manure  Co.,  8  P,  R.  125. 

44— Re  Graham,  2  Off.  Gaz.  618. 

45— Stokes  v.  Landgraff,  17 
Barb.  608;   Cox,  Am.  Tr.  Cas.  137. 

46— Raggett  v.  Findlater,  L.  R. 
17  Eq.  29;  43  L.  J.  Ch.  64;  29  L. 
T.  N.  S.  448;  22  W.  R.  53;  Seb. 
431. 

47— Hardy  v.  Cutter,  3  Off.  Gaz. 
468. 

48— Allen  B.  Wrisley  Co.  v. 
Iowa  Soap  Co.,  104  Fed.  Rep.  548; 
Allen  B.  Wrisley  Co.  v.  Iowa  Soap 


Co.,  59  C.  C.  A.  54,  122  Fed.  Rep. 
r96. 

49— Watt  V.  O'Kanlon,  4  P.  R.  1. 

50 — Binninger  v.  AVattles,  28 
How.  Pr.  206. 

51— Ex  parte  Olive  "Wheel  Co., 
84  Off.  Gaz.  1871. 

52 — Young  V.  Macrae,  9  Jur.  N. 
S.  322. 

53— Selchow  v.  Chaffee  &  Sel- 
chow  Mfg.  Co.,  132  Fed.  Rep.  996. 

54 — Re  Johnson,  2  Off.  Gaz.  315. 

55— ^a^  parte  Rail,  85  Off.  Gaz. 
453. 

56— Eggers  v.  Hink,  63  Cal.  445. 

57 — Coffman  v.  Castner,  87  Fed. 
Rep.  457,  31  C.  C.  A.  55.  Affirmed  in 
Castner  v.  Coffman,  178  U.  S.  168, 
44  L.  ed.  1021,  and  overruling  At- 
water  v.  Castner,  32  C.  C.  A.  77, 
88  Fed.  Rep.  642. 

58— Kelly  v.  Byles,  40  L.  T.  623. 

59— Re  Brandreth,  Seb.  626. 

60— Popham  v.  Wilcox,  66  N.  Y. 
69. 


94 


HOPKINS   ON   TRADEMARKS. 


[§41 


dou  International  Exhibition  of  1862 j^^^  ''Purity,"  oleo- 
margarine.^" 

"Ked,"  snuff  ;^2  "Richardson's  Patent  Union,"  leather 
splitting  machine;^-*  ''Rose,"  vanilla  extract;*"^  "Rosen- 
dale,"  cement ;««  "Rye  and  Rock,"  liquor.''^ 

"Safety,"  explosive  powder ;^»  "Sanitary,"  filter ;'^'» 
' '  Sarsaparilla  and  Iron, ' '  tonic ; '  "^  ' '  Satinine, ' '  starch  and 
soap;^  "Satin  Polish,"  boots  and  shoes;-  "Schiedam 
Schnapps,"  liquor ;3  "Selected  Shore,"  mackerel;^  "Sin- 
ger," sewing  machines,  after  expiration  of  the  Singer 
patents;^  "Snowflake,"  crackers,  the  word  being  descrip- 
tive of  the  quality  of  flour  used;"  "Somatose,"  meat  ex- 
tract, from  the  Greek  "soma,"  Angl.  "body,"  genitive 
"somatos;"^  "Splendid,"  flour ;«  "Standard  A,"  cigars ;» 


61— Batty  v.  Hill,  1  H.  &  M. 
264;  8  L.  T.  N.  S.  791;  11  W.  R. 
745;   2  N.  R.  265;   Seb.  218. 

62 — Ex  parte  Capitol  City  Dairy 
Co.,  83  Off.  Gaz.  295. 

63 — Ex  parte  Pearson  Tobacco 
Co.,  85  Off.  Gaz.  287. 

64— Re  Richardson,  3  Off.  Gaz. 
120. 

65 — Clotworthy  v.  Schepp,  42 
Fed.  Rep.  62. 

66 — New  York  Cement  Co.  v. 
Coplay  Cement  Co.  (1),  44  Fed. 
Rep.  277;  New  York  Cement  Co. 
V.  Coplay  Cement  Co.  (2),  45  Fed. 
Rep.    212. 

67— Van  Beil  v.  Prescott,  82  N. 
Y.  630. 

68 — Ex  parte  Safety  Powder  Co., 
16  Off.  Gaz.  136. 

69— Re  Atkins  Filter  Co.,  3  P. 
R.  164. 

70— Schmidt  v.  Brieg,  100  Cal. 
672;  Same  v.  McEwen,  35  Pac. 
Rep.  854;  Same  v.  Crystal  Soda 
Water  Co.,  Id.  855;  Same  v. 
Steinke,  Id.  855;    Same  v.  Haake, 


Id.  855;   Same     v.     Liberty     Soda 
Works  Co.,  Id.  856. 

1— Re  Meyerstein,  7  R.  P.  C.  114; 
L.  R.  43  Ch.  D.  604;  59  L.  J.  Ch. 
401;  62  L.  T.  526;  38  W.  R.  440; 
Cartmell,   225. 

2 — Ex  parte  Brigham,  20  Off. 
Gaz.  891. 

3— Wolfe  V.  Goulard,  18  How.  Pr. 
64;  Seb.  179;  Cox,  Am.  Tr.  Cas. 
226;  Burke  v.  Cassin,  45  Cal.  467; 
Wolfe  V.  Hart,  4  V.  L.  R.  Eq.  125; 
Wolfe  V.  Alsop,  10  V.  L.  R.  Eq. 
41;  12  V.  L.  R.  421;  Wolfe  v. 
Lang,  13  V.  L.  R.  752. 

4 — Trask  Fish  Co.  v.  Wooster,  28 
Mo.  App.  408. 

5— Singer  Mfg.  Co.  v.  June  Mfg. 
Co.,   163   U.   S.   169. 

6 — Larrabee  v.  Lewis,  67  Ga. 
561;  44  Am.  Rep.  735. 

7— Farben-fabriken  T.  M.  K.,  7 
R.  P.  C.  439;  L.  R.  (1894)  1  Ch. 
645. 

S—Ex  parte  Stokes,  64  Off.  Gaz. 
437. 

2— Ex  parte  Cohn  (1),  16  Off. 
Gaz.  680. 


§41 


WHAT    CONSTITUTES   A    \AIAD   TRADEMAHK. 


95 


''Steel  Shod,"  shoes  having  soles  quilted  with  steel 
wire;^'^  "Stoga  Kip,"  boots;"  "Straight-Cut,"  cigar- 
ettes;'^ "Svenska  Suusiiiagauiset, "  meaning  Swedish 
snuff  store;'-''  "Sweet  Lotus,"  tobacco;'^  "Swing," 
scythe-sockets.'^ 

"Taffy-Tolu,"  chewing-gum;"^  "Tasteless,"  drugs;'^ 
"Thomsonian,"  medicines;'**  "Timekeeper,"  watches;'" 
"Toothache  Gum,"  remedy  for  toothache;-"  "Tycoon," 
tea;-'  "Tucker  Spring,"  bed.-- 

" United  States,"  dental  rooms.-^ 

"Valvolene,"  oil;--"  "V-0,"  medicine;-^  "Vitae-Ore," 
medicine;-"  "Victoria,"  lozenges.-^ 

"Water  of  Ayr,"  stone;-'*  "Webster's  Dictionary,"  ap- 
plied to  the  standard  lexicon  of  that  name;-^  "Whirling 
Spray,"  syringes ;^*^  "Wister's  Balsam  of  White  Cherry," 
medicine;^'  "AVorcestershire, "  sauce.^^ 


10 — Brennan  v.  Emery-Bird- 
Thayer  Dry  Goods  Co.,  99  Fed. 
Rep.  971;  S.  C.  108  Fed.  Rep.  624; 
47  C.  C.  A.  532. 

11— Walker  v.  Reid,  Fed.  Case 
No.  17,084. 

12— Ginter  v.  Kinney,  12  Fed. 
Rep.  782. 

13 — Bolander  v.  Peterson,  136 
111.  215. 

14— Wellman  &  Dwire  Tob.  Co. 
V.  Ware  Tob.  Works,  46  Fed.  Rep. 
289. 

15 — Ex  parte  Thompson,  Derby 
&  Co.,  16  Off.  Gaz.  137. 

16 — Colgan  v.  Danheiser,  35  Fed. 
Rep.  150. 

17— Re  Dick  &  Co.,  9  Off.  Gaz. 
538. 

18 — Thomson  v.  Winchester,  36 
Mass.  214. 

19 — Ex  parte  Strasburger  &  Co., 
20  Off.  Gaz.  155. 

20— Devlin  v.  McLeod,  135  Fed. 
Rep.  164;  Devlin  v.  Peck,  135  Fed. 
Rep.  167. 


21— Corbin  v.  Gould,  133  U.  S. 
308. 

22— Tucker  Mfg.  Co.  v.  Boying- 
ton,  9  Off.  Gaz.  455,  Fed.  Case  No. 
14229. 

23— Cady  v.  Schultz,  19  R.  I. 
193;  61  Am.  St.  Rep.  763. 

24— Re  Horsburgh,  53  L.  J.  Ch. 
237. 

25— Noel  V.  Ellis,  89  Fed.  Rep. 
978-981. 

26 — Noel  V.  Ellis,  supra. 

27 — Wotherspoon  v.  Gray,  Ct. 
Sess.  Cas.    (3d  ser.)    2,38. 

28 — Montgomerie  v.  Donald,  Ct. 
Sess.   Cas.    (4th  ser.)    11,506. 

29 — Merriam  v.  Texas  Siftings 
Pub.  Co.,  49  Fed.  Rep.  944-947. 

30— Marvel  Co.  v.  Pearl,  C.  C.  A., 
133  Fed.  Rep.  160,  162. 

31— Towle  v.  Spear,  7  Penn.  L. 
J.  176;  Cox,  Am.  Tr.  Cas.  67;  Seb. 
90. 

32— Lea  v.  Deakln,  11  Biss.  2a 
Fed.  Case  No.  8154;  Lea  v. 
Wolff,     15    Abb.   Pr.   N.   S.   1;     46 


96 


HOPKINS   ON   TRADEMARKS. 


:§42 


''Yale,"  locks ;^^  "Yucatan,"  leather  and  leather 
goods.^^ 

§  42.  Examples  of  valid  trademarks,  fancy,  arbitrary 
or  distinctive  words.— The  following  instances  are  illus- 
trative of  fancy,  arbitrary  or  distinctive  words,  which 
have  been  either  held  proper,  protected  against  unfair 
competition,  or  their  use  upheld  as  trademarks  in  appli- 
cation to  the  classes  of  merchandise  in  connection  with 
which  the  words  have  respectively  been  used.  In  some 
cases  the  question  of  validity  was  not  raised,  nor  are  all 
of  them  to  be  upheld  as  technical  trademarks.  These 
illustrations  are  given  in  their  alphabetical  order  to  fa- 
cilitate reference. 

''Ainswortli,"  thread ;^^  "Alderney,"  oleomargarine;^^ 
''American  Cold  Japan,"  paint;"  "American  Express," 
sealing  wax;^^  "American  Volunteer,"  shoes ;3^  "Anato- 
lia," licorice ;^<^  "A.  N.  Hoxie's  Mineral,"  soap;^^  "An- 
chor Brand,"  wire;^^  " Annihilator,"  medicine;"^^  "Anti- 
Wash-board,"  soap;'*^  "Apollinaris,"  mineral  water ;^-^ 
"A.  V.  H.,"  gin.-^e 


How.  Pr.  157;  Seb.  407;  Lea  v. 
Millar,  Seton  (4th  ed.),  242;  Seb. 
513. 

33 — Ex  parte  Yale  &  Towne  Mfg. 
Co.  81  Off.  Gaz.  801. 

M—Ex  parte  V/eil,  83  Off.  Gaz. 
1802. 

35 — Ainsworth  v.  Walmesley,  ii 
L.  R.  1  Eq.  518. 

36— Lauferty  v.  Wheeler,  11 
Abb.  N.  C.  220;  11  Daly,  194;  63 
How.  Pr.  488. 

37— Reader  v.  Brodt,  6  Ohio  Dec. 
248;  4  Ohio  N.  P.  265. 

38 — Dennison  Mfg.  Co.  v. 
Thomas  Mfg.  Co.,  94  Fed.  Rep.  651- 
653. 

39 — Joseph  Banigan  Rubber  Co. 
V.  Bloomingdale,  89  Off.  Gaz.  1670. 

40 — McAndrews  v.  Bassett,  4 
DeG.  J.  &  S.  380;  33  L.  .J.  Ch.  566; 
10  Jur.  N.  S.  550;   10  K  T.  N.  S. 


442;  12  W.  R.  777;  4  N.  R.  123; 
Cox,  669.  Anatolia  is  a  geograph- 
ical name,  but  its  use  here  w.as 
protected  on  the  theory  of  unfair 
competition. 

41 — Hoxie  V.  Chaney,  143  Mass. 
592. 

42— Edelsten  v.  Edelsten,  1  DeG. 
J.  &  S.  185;  Cox,  667. 

43 — Fulton  V.  Sellers,  4  Brewct. 
42. 

44 — O'Rourke  v.  Central  City 
Soap  Co.,  26  Fed.  Rep.  576. 

45 — Apollinaris  Co.  v.  Norrish, 
33  L.  T.  N.  S.  242;  Same  v.  Ed- 
wards, Seton  (4th  ed.),  247;  Same 
V.  Moore,  Cox,  Manual,  Case  No. 
675;  Same  v.  Herrfeldt,  4  P.  R. 
478;  Same  v.  Soberer,  27  Fed.  Rep. 
18. 

46 — Van  Hoboken  v.  Mohns  & 
Kaltenbach,  112  Fed.  Rep.  528. 


42] 


WHAT    CONSTITUTES   A    \MAD   TRADEMARK. 


97 


"Baco-Curo,"  remedy  for  tobacco  habit;*'  ''B.  1^.  B.," 
medicine ;^«  "B.  B.  H.,"  with  a  crown,  iron;^'-*  ''Baffle," 
safes;-"'"  "Balm  of  Thousand  Flowers,"  cosmetic;"'' 
"Beatty's  Headline,"  copy  book;'^-  "Bell  of  Moscow," 
wine;"'^  "Benedictine,"  liqueur;"'^  "Bethesda,"  mineral 
water ;^'^  "Bismarck,"  paper  collars;^"  "Blackstone,"  ci- 
gars;" "Blood  Searcher,"  medicine ;"''*  "Blue  Lick," 
water;'^"  "Boker's  Stomach  Bitters,"  medicine;"'^  "Bovi- 
lene,"  pomade;"'  "Bovril,"  meat  extract;''-  "Bromidla," 
medicine  f'^  ' '  Bromo-Caffeine, ' '  medicine.''^ 

"Carrom,"  game-board;*^"'  "Cashmere  Bouquet,"  toilet 
soap;®**  "Celluloid,"  compound  of  pyroxyline ;^^  "Celery 


47 — Sterling  Remedy  Co.  v.  Eu- 
reka Chemical  and  Mfg.  Co.,  80 
Fed.  Rep.  105;  49  U.  S.  App.  709; 
25  C.  C.  A.  314. 

48 — Foster  v.  Bloou  Balm  Co., 
77  Ga.  216.  3  S.  E.  Rep.  284. 

49— Hall  V.  Barrows,  4  DeG.  J. 
&  S.  150;  Cox,  668. 

50— Talbot  V.  Webley,  3  R.  P.  C. 
276;   Cartmell,  324. 

51 — Fetridge  v.  Merchant,  4  Abb. 
Pr.  156. 

52— Gage  v.  Canada  Publ.  Co..  11 
Can.  Sup.  Ct.  306;  6  Ont.  Rep.  68; 
11  Ont.  App.  402. 

53 — Re  Charles  Narcisse  Ferre, 
Cert.  No.  8939. 

54 — Societe  Anonyme  v.  Western 
Distilling  Co.,  43  Fed.  Rep.  416; 
Societe  Anonyme  De  La  Distillerie 
De  La  Benedictine  v.  Micalovitch, 
Fletcher  &  Co..  36  Abb.  Law  J.  364; 
A.  Bauer  &  Co.  v.  Distillerie  de  la 
Liqueur  Benedictine,  56  C.  C.  A. 
480,  120  Fed.  Rep.  74. 

55 — Dunbar  v.  Glenn,  42  Wis. 
118;   Seb.  529. 

56 — Messerole  v.  Tynberg,  4  Abb. 
Pr.  N.  S.  410;  36  How.  Pr.  14;  Cox. 
479;  Seb.  300. 
7 


57— Levy  v.  Waitt,  56  Fed.  Rep. 
1016. 

58 — Fulton  V.  Sellers,  4  Brewst. 
42;    Cox,  Manual,  Case  No.  279. 

59— Northcutt  v.  Turney,  101 
Ky.  314;  41  S.  W.  Rep.  21;  Park- 
land Hill  Blue  Lick  Water  Co.  .v. 
Hawkins  (Ky.)  26  S.  W.  Rep.  389; 
95  Ky.  502;  16  Ky.  Law  Rep.  210; 
44  Am.  St.  Rep.  254. 

60— Funke  v.  Dreyfus,  34  La. 
Ann.  80;    44  Am.  Rep.  413. 

61 — Lockwood  v.  Bostwick,  2 
Daly,  521. 

62— Re  Bovril,  L.  R.  (1896)  2 
Ch.  D.  600. 

63— Battle  v.  Finlay  (2),  50  Fed. 
Rep.  106;  Battle  v.  Finlay  (1),  45 
Fed.  Rep.  796. 

64 — Keasbey  v.  Brooklyn  Chem- 
ical Works,  37  N.  E.  Rep.  476;  142 
N.  Y.  467;  reversing  s.  c,  21  N.  Y. 
Supp.  696. 

65 — Luddington  Novelty  Co.  v. 
Leonard,  119  Fed.  Rep.  937;  Wil- 
liams v.  Mitchell,  45  C.  C.  A.  265, 
106  Fed.  Rep.  168. 

66— Colgate  &  Co.  Cert.  No.  914 
Colgate  v.  Adams,  88  Fed.  Rep. 
899. 

67— Celluloid  Mfg.  Co.  v.  Read, 


98 


HOPKINS  ON  TRADEMARKS. 


[§42 


Compound,"  medicine;^*  ''Centennial,"  clothing ;^^  or  al- 
coholic spirits;''^  ''Champion,"  flour  ;^^  "Charley's 
Aunt,"  name  of  farce ;^2  "Charter  Oak,"  stoves;'^  "Chat- 
terbox," juvenile  books,  published  periodically;'^  "Chi- 
cago Waists,"  corset  waists;"^  "Chicken  Cock,"  whis- 
key;'^ "Chinese  Liniment " ;''  "Climax,"  stoves;'^ 
"Club,"  Cocktails ;'»  "Club  Soda,"  carbonated  water ;«» 
"Coal  Oil  Johnny's  Petroleum,"  soap;^^  "Cocoaine," 
hair  oil;^-  "Coe's  Superphosphate  of  Lime,"  fertilizer ;^3 
"Comfort,"  periodical  publication;^^  "Compactum," 
umbrellas ;^^  "Congress  Water,"  mineral  water ;^^  "Cot- 
tolene, ' '  lard  substitute  :^' ' '  Cough  Cherries, ' '  conf ection- 


47  Fed.  Rep.  712;  Celluloid  Mfg. 
Co.  V.  Cellonite  Mfg.  Co.,  32  Fed. 
Rep.  94. 

68 — Wells  &  Richardson  Co.  v. 
Siegel,  Cooper  &  Co.,  106  Fed.  Rep. 
77. 

69 — Sternberger  v.  Thalheimer, 
3  Off.  Gaz.  120. 

70— Re  Bush  &  Co.,  10  Off.  Gaz. 
164. 

71— Atlantic  Milling  Co.  v.  Rob- 
inson, 20  Fed.  Rep.  217;  27  Off. 
Gaz.  1322. 

72— Frohman  v.  Miller,  29  N.  Y. 
S.  1109;   8  Misc.  Rep.  379. 

73 — Filley  v.  Fassett,  44  Mo. 
173;  100  Am.  Dec.  275;  Cox,  Am. 
Tr.  Cas.  530;  9  Am.  L.  Reg.  N.  S. 
402;  Seb.  313;  Filley  v.  Child,  16 
Blatchf.  376. 

74 — Estes  V.  Leslie,  29  Fed.  Rep. 
91;  Estes  v.  Worthington,  31  Fed. 
Rep.  154;  Estes  v.  Leslie,  27  Fed. 
Rep.  22;  Fed.  Case  No.  4787. 

75 — Gage-Downs  Co.  v.  Feather- 
bone  Corset  Co.,  83  Fed.  Rep.,  213. 

76— G.  G.  White  Co.  v.  Miller,  50 
Fed.  Rep.  2W. 


77 — Coffeen  v.  Brunton,  4  Mc- 
Lean 516;   5  McLean  256. 

78 — Filley  v.  Fassett,  44  Mo.  173. 

79 — Heublein  v.  Adams,  125 
Fed.  Rep.  782. 

80 — Cochrane  v.  Macnish  (P. 
C.)  L.  R.  (1896)  A.  C.  225;  65  L. 
J.  P.  C.  N.  S.  20;  74  Law  T.  R. 
109. 

81— Petrolia  Mfg.  Co.  v.  Bell  & 
Bogart  Soap  Co.,  97  Fed.  Rep.  781. 

82 — Burnett  v.  Phalon,  3  Keyes, 
594;  5  Abb.  Pr.  N.  S.  212;  9  Bos. 
193. 

83— Bradley  v.  Norton,  33  Conn. 
157;  Cox's  American  Trademark 
Cases  331;  87  Am.  Dec.  200. 

84— Gannert  v.  Rupert,  127  Fed. 
Rep.  962,  62  C.  C.  A.  594,  revers- 
ing S.  C.  119  Fed.  Rep.  221. 

85— Re  Davis  Trademarks,  22 
Trademark  Record,  50. 

86 — Congress,  etc.  Spring  Co.  v. 
High  Rock  Congress  Spring  Co.  57 
Barb.  526;  Cox,  599;  45  N.  Y.  291; 
10  Abb.  P.  R.  N.  S.  348;  6  Am.  Rep. 
82;  4  Am.  L.  T.  168;  Cox,  Am.  Tr. 
Cas.  624;    Seb.  354. 

87— N.  K.  Fairbank  Co.  v.  Cen 
tral  Lard  Co.,  64  Fed.  Rep.  133. 


42] 


WHAT    CONSTITUTES   A    VALID   TUADEMARK. 


99 


gj.y..88  <' Cream,"  baking  powder;*"  **Cuticura,"  toilet 
soap."" 

** Derringer, "  fire-arms;^  '*Dr.  Drake's  German  Croup 
Remedy,"  medicine;*-  '*Dr.  Lobenthal's  Essentia  Anti- 
phthisica,"  medicine;''  ** Dublin,"  soap;^  "Durham," 
smoking  tobacco;''  " Dyspepticure, "  medicine.® 

"Edelweiss,"  perfume;^  "Elastic,"  book-cases;® 
"Electro-Silicon,"  polishing  jn-eparation ;**  "Elk,"  ci- 
gars;^'^  "Emollia,"  toilet  cream;''  "Empire,"  stoves;^^ 
"Epicure,"  canned  salmon;'-'  "Ethiopian,"  stockings ;^^ 
"Eureka,"  fertilizer;'"'  shirts,"'  fire-hose,^'^  or  steam- 
packing;^*  "Excelsior,"  stoves;^"  or  soap.^** 


88— Stoughton  v.  Woodard,  39 
Fed.  Rep.  902. 

89 — Price  Baking  Powder  Co.  v. 
Fyfe,  45  Fed.  Rep.  799. 

90 — Potter  Drug  &  Chem.  Co.  v. 
Miller,  75  Fed.  Rep.  656.  Held  in- 
fringed by  word  "curative"  and 
imitative  devices.  The  mark  as- 
sumed to  be  valid  in  Potter  Drug 
&  Chem.  Corp.  v.  Pasfield  Soap  Co., 
102  Fed.  Rep.  490;  Same  v.  Same. 
106  Fed.  Rep.  914,  46  C.  C.  A.  40. 

1— Derringer  v.  Plate,  29  Cal. 
292;  Cox,  Am.  Tr.  Cas.  324. 

2 — Drake  Medicine  Co.  v.  Gless- 
ner  68  Ohio  St.  337,  67  N.  E.  Rep. 
722. 

3— Re  Rohland,  10  Off.  Gaz.  980. 

4— Re  Cornwall  &  Co.,  12  Off. 
Gaz.  312. 

5 — Blackwell  v.  Armistead,  Fed. 
Case  No.  1474,  5  Am.  L.  T. 
85;  3  Hughes,  163;  Armistead  v. 
Blackwell,  1  Off.  Gaz.  603;  Black- 
well  v.  Dibrell,  14  Off.  Gaz.  633, 
Fed.  Case  No.  1475;  Blackwell  v. 
Wright,  73  N.  C.  310. 

Q—Ex  parte  Foley  &  Co.,  87  Off. 
Gaz.  1957. 

7 — Rosing  v.  Atkinson,  27  Sol. 
J.  634. 


8 — Globe- Wernicke  Co.  v.  Brown, 
121  Fed.  Rep.  185. 

9 — Electro-Silicon  Co.  v.  Hazard, 
29  Hun,  369;  36  N.  Y.  Sup.  Ct.  369. 

10 — Lichtenstein  v.  Goldsmith, 
37  Fed.  Rep.  359. 

11— Re  Grossmith,  60  L.  T.  N.  S. 
612. 

12— Filley  v.  Fassett,  44  Mo. 
173;   Seb.  313. 

13— George  v.  Smith,  52  Fed. 
Rep.  830. 

14— Hine  v.  Lart,  10  Jur.  106;  7 
L.  T.  O.  S.  41;  Seb.  80. 

15 — Alleghany  Fertilizer  Co.  t. 
Woodside,  1  Hughes,  115;  Seb.  364; 
Fed.  Case  No.  206. 

16— Ford  V.  Foster,  L.  R.  7  Ch. 
D.  611;  41  L.  J.  Ch.  682;  27  L.  T. 
N.  S.  219;   20  W.  R.  818;   Seb.  384. 

17 — Eureka  Fire  Hose  Co.  v. 
Eureka  Rubber  Mfg.  Co.,  N.  J.  Ch. 
60  Atl.  Rep.  561. 

18 — Symonds  v.  Greene,  28  Fed. 
Rep.  834. 

19— Filley  v.  Fassett,  44  Mo. 
173;  S.b.  313;  Sheppard  v.  Stuart, 
13   Phila.   117. 

20— Braham  v.  Bustard,  1  H,  & 
M.  447,  9  L.  T.  N.  S.  199. 


100 


HOPKINS   ON   TRADEMARKS. 


[§42 


*'Faber,"  pencils  pi  '' Family,"  salve  ;22  **Favorita," 
flour r^  "Fibre  Chamois,"  dress  linings r^  ''Filofloss," 
silkr'^  ''Filh-e  Rapide,"  filters.^^ 

''Glenfield,"  starch;-^  or  washing  powder ;^^  "Golden 
Crown, ' '  cigars  ;-^  ' '  Golden  Wedding, ' '  whiskey  f^ ' '  Gou- 
raud's  Oriental  Cream,"  cosmetic ;^^  "Hunter,"  whis- 
key;^-  "Grand  Master,"  cigars ;^^  "Green  Mountain," 
scythe-stones;^^  "Grenade,"  syrup.^^ 

"Hanford's  Chestnut  Grove,"  whiskey ;^*^  "Hansa," 
lard,  sausages  and  bacon  ;^^  "Heliotype,"  prints  ;^^ 
"Hero,"  jars;^''  "Home,"  sewing  machine;^"  "Hoosier," 
drills;''^  "Howqua's  Mixture,"  tea;*^  "Hunyadi,"  medi- 
cinal water  ;'^^  "Hygeia,"  water  ;^^  "  Hygieniques, "  sus- 
penders.'*'^ 


21— Faber  v.  Faber,  49  Barb. 
357;  3  Abb.  Pr.  N.  S.  115;  Cox,  Am. 
Tr.  Cas.  401. 

22 — Reinhart  v.  Spaulding,  49  L. 
J.  Ch.  57. 

23— Menendez  v.  Holt,  128  U.  S. 
182;  Cox,  Manual,  Case  No.  707. 

24 — ^American  Fibre  Chamois 
Co.  V.  De  Lee,  67  Fed.  Rep.  329; 
71  Off.  Gaz.  1458. 

25 — Rawlinson  v.  Brainard  & 
Armstrong  Co.  59  N.  Y.  Supp.  880; 
28  Misc.  Rep.  287. 

26 — Re  Maignen's  Application, 
28  W.  R.  759;    Cartmell,  216. 

27 — Wotherspoon  v.  Currie,  L. 
R.  5  H.  L.  508;  42  Law  J.  Ch.  130; 
27  L.  T.  N.  S.  393. 

28— N.  K.  Fairbank  Co.  v. 
Luckel,  etc.  Soap  Co.,  88  Fed.  Rep. 
694. 

29— Palmer  v.  Harris,  60  Pa.  St. 
156. 

30 — Pontefact  v.  Isenberger,  106 
Fed.  Rep.  499. 

31— Gouraud  v.  Trust,  10  N.  Y. 
Sup.  Ct.  627. 

32 — Lanahan  v.  John  Kissel  & 
Son,  135  Fed.  Rep.  899. 


33— Yale  Cigar  Mfg.  Co.  v.  Yale, 
30   Off.   Gaz.   1183. 

34— Pike  Mfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed.  Rep.  896. 

35— Rillet  V.  Carlier,  61  Barb. 
435. 

36— Hanford  v.  Westoott,  16  Off. 
Gaz.  1181. 

37 — Ex  parte  Tietgens  &  Robert- 
son. 87  Off.  Gaz.  2117. 

38 — Osgood  V.  Rockwood,  11 
Blatchf.  310,  Fed.  Case  No.  10605. 

39 — Rowley  v.  Houghton,  2 
Brewst.  303. 

40 — New  Home  Sewing  Machine 
Co.  V.  Bloomingdale,  59  Fed.  Rep. 
284. 

41 — Julian  v.  Hoosier  Drill  Co., 
78  Ind.  408. 

42— Pidding  v.  How.,  8  Sim.  477. 

44 — Saxlehner  v.  Eisner  &  Men- 
delson  Co.   (3),  179  U.  S.  19. 

45 — Waukesha  Hygeia  Mineral 
Springs  Co.  v.  Hygeia  Sparkling 
Distilled  Water  Co.,  63  Fed.  Rep. 
438;  11  C.  C.  A.  277;  Hygeia  Dis- 
tilled Water  Co.  v.  Hygeia  Ice  Co., 
72  Conn.  646;  45  Atl.  Rep.  957;  49 
L.  R.  A.  147. 


§42] 


WHAT    CONSTITUTES   A    VALID   TRADEMARK. 


101 


"Ideal,"  fountain  pens;^^  "Indian  Pond,"  scythe- 
stones;"**'  "Indian  Root,"  pills ;^^  "In-er-seal,"  bakery- 
products;'^''  "Insectine,"  insect  powder;"*'  "Insurance," 
Qjj.52  **lnvigorator,"  spring  bed  bottoms ;^^  "Iron  Clad," 
boots.^* 

"Junket,"  rennet  preparation.^' 

"Kaiser,"  beer;^''  "Kathairon,"  remedy;'*'^  "King 
Bee,"  smoking  tobacco;'^  "Kitchen  Crystal,"  soap;-^* 
"Knickerbocker,"  shoes ;^''  "Koffio,"  cereal  coffee.*'^ 

"La  Cronica,"  newspaper;*'-  "Lacto-Peptine,"  medi- 
cine ;^^  "La  Favorita,"  flour;'''*  "Lamoille,"  scythe- 
stones;*''  "La  Norma,"  cigar-boxes;*'*'  "La  Normandi," 
cigars;*'^  "Leopold,"  woolen-cloth;*'^  "LaPage,"  glue;^* 


46 — Bailly  v.  Nashawannuck 
Mfg.  Co..  51  Off.  Gaz.  970;  10  N. 
Y.  Supp.  224. 

47 — Waterman  v.  Shipman,  130 
N.  Y.  301. 

48— Pike  Mfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed,  Rep.  896. 

49 — Comstock  v.  White,  18  How. 
Pr.  421. 

50 — Ohio  Baking  Co.  v.  National 
Biscuit  Co.,  62  C.  C.  A.  116;  127 
Fed.  Rep.  116;  affirming  National 
Biscuit  Co.  V.  Ohio  Baking  Co.,  127 
Fed.  Rep.  160. 

51 — Arthur  v.  Howard,  19  Pa. 
Co.  Ct.  81. 

52 — Insurance  Oil  Tank  Co.  v. 
Scott,  33  La.  Ann.  946. 

52— Ex  parte  Heyman,  18  Off. 
Gaz.  922. 

54 — Hecht  v.  Porter,  9  Pac. 
Coast,  L.  J.  569. 

55 — Hansen  v.  Siegel-Cooper  Co. 
(2),  106  Fed.  Rep.  691. 

56 — Kaiserbrauerei  v.  Blatz 
Brewing  Co.,  71  Fed.  Rep.  695;  s. 
c.  affirmed,  74  Fed.  Rep.  222. 

57— Heath  v.  Wright.  Cox,  Am. 
Tr.  Cas.  154,  3  W^all.  Jr.  1. 


58 — Sarrazin  v.  W.  R.  Irby  Cigar 
Co.,  93  Fed.  Rep.  634,  35  C.  C.  A. 
496. 

59— Re  Eastman,  W.  N.  1880,  p. 
128. 

60— Burt  V.  Tucker,  178  Mass. 
493.  59  N.  E.  Rep.  1111,  52  L.  R.  A. 
112. 

61 — Sleepy  Eye  Milling  Co.  t. 
C.  F.  Blanke  Tea  &  Coffee  Co.,  85 
Off.  Gaz.  1905. 

62 — Stephens  v.  DeConto,  4 
Abb.  Pr.  N.  S.  47. 

63 — Carnrick  v.  Morson;  Seb. 
543;    Cox,  Manual,  543. 

64 — Menendez  v.  Holt,  128  U.  S. 
514. 

65— Pike  Mfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed.  Rep.  896. 

66 — Ex  parte  Egyptian  Cigarette 
Co.,  85  Off.  Gaz.  1905. 

67 — Stachelberg  v.  Ponce,  23 
Fed.  Rep.,  430. 

68 — Hirst  v.  Denham,  L.  R,  14 
Eq,  542;  27  L.  T.  N.  S.  56;  41  L. 
J.    Ch.    752. 

69 — Russia  Cement  Co.  v.  Katz- 
enstein,  109  Fed.  Rep.  314. 


102 


HOPKINS   ON   TRADEMARKS. 


[§42 


''Licensed  Victuallers,"  relish  ;'^^  ''Lightning,"  hay 
knives ;'^^  "Lion,"  merchandise;'^-  "Liverpool,"  woolen 
cloth ;^^  "London  Whiffs,"  cigars;^*  "Lone  Jack,"  smok- 
ing tobacco/^ 

"Magic,"  scythe-stones;^^  "Magnetic  Balm,"  oint- 
ment ;^^  "Magnolia,"  liquor ;'^^  "Maizena,"  corn  flour ;'^^ 
"Marvel,"  mill  products;^"  "Medicated  Mexican  Balm," 
medicine  ;^^  "Menlo  Park,"  watches  ;^2  <'Mojava," 
blended  coffee  ;«^  "Muffet,"  neck-scarf s.^* 

"Napoleon,"  cigars  ;^^  "New  Era,"  newspaper;^* 
"Nickel,"  soap;«^  "Nickel-Li,"  cigars ;««  "No-To-Bac," 
medicine.^^ 

"0.  F.  C,"  whiskey ;»«  "Old  Crow,"  whiskey ;''i  "Ome- 


70— Cotton  V.  Gillard,  44  L.  J. 
Ch.  90. 

71— Hiram  Holt  Co.  v.  Wads- 
worth,  41  Fed.  Rep.  34. 

72 — Re  Weaver,  10  Off.  Gaz.  1. 

73— Hirst  v.  Denham,  L.  R.  14 
Eq.    542. 

74 — Feder  v.  Brudno,  5  Ohio  N. 
P.  275. 

75 — Carroll  v.  Ertheiler,  1  Fed. 
Rep.   688. 

76 — Pike  Mfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed.  Rep.  896. 

77— Smith  v.  Sixbury,  25  Hun. 
232;   32  N.  Y.  Sup.  Ct.  232. 

78 — Kidd  &  Co.  v.  Mills,  Johnson 
&  Co.,  5  Off.  Gaz.  337;  Kidd  v. 
Johnson,  100  U.  S.  617. 

79 — Glen  Cove  Mfg.  Co.  v.  Lude- 
ling,  22  Fed.  Rep.  823. 

80 — Listman  Mill  Co.  v.  William 
Listman  Milling  Co.,  60  N.  W. 
Rep.  261;  88  Wis.  334. 

81— Perry  v.  Truefit,  6  Beav.  56; 
1  L.  T.  384;  Seb.  73. 


82 — Ex  parte  Hampden  Watch 
Co.,  81  Off.  Gaz.  1282. 

83 — American  Grocery  Co.  v. 
Sloan,  68  Fed.  Rep.  539. 

84 — Hygienic  Fleeced  Underwear 
Co.  V.  Way,  C.  C.  A.  137  Fed.  Rep. 
592,  595. 

85— Goldstein  v.  Whelan,  62  Fed. 
Rep.    124. 

86— Bell  v.  Locke,  8  Paige,  75; 
Cox,  Am.  Tr.  Cas.  11. 

87— Ex  parte  Butler,  87  Off.  Gaz. 
1781. 

88— Schendel  v.  Silver,  18  N.  Y. 
Supp.  1;  63  Hun.  330. 

89 — Sterling  Remedy  Co.  v.  Eu- 
reka, etc.  Mfg.  Co.,  70  Fed.  Rep. 
704;    80  Fed.  Rep.   105. 

90— Geo.  T.  Stagg  Co.  v.  Taylor, 
95  Ky.  651;    27  S.  W.  Rep.  247. 

91 — W.  A.  Gaines  &  Co.  v.  Leslie, 
54  N.  Y.  Supp.  421;  W.  A.  Gaines 
&  Co.  V.  E.  Whyte  Grocery,  Fruit 
&  Wine  Co.,  107  Mo.  App.  507;  81 
S.  W.  Rep.  648. 


§42] 


WHAT    CONSTITUTES   A   VALID   TRADEMARK. 


103 


ga  Oil,"  liniment ;»2  ''Osman,"  towels ;"3  ''Otaka,"  bis- 
cuits ;»^  '' Oxford,"  bibles.»=^ 

"Pain-Killer,"  medicine;"*^  ''Parabola,"  needles;-'^ 
''Pectorine,"  medicine;"^  **Pepto-Mangan,"  medicinal 
preparation;"''  "Perfection,"  mattresses;^  "Persian," 
thread ;2  "Pigs  in  Clover,"  puzzle;^  "Portland,"  stoves;^ 
"Pride,"  cigars;'^  "Puddine,"  pudding  preparation.^ 

"Queen,"  shoes.'^ 

"Ranier,"  beer;*  "Rising  Sun,"  stove  polish;'*  "Roger 
Williams,"  cotton  cloth ;'**  "Rosebud,"  canned  salmon ;^^ 
"Royal,"    baking    powder;*-     "Royal    Blue,"     carpet 


13 


sweeper, 

"Sapolio,"   scouring  brick  ;*^    "Saponifier,"    concen- 
trated lye;'5  "Sefton,"  cloth;*«  "Shawknit,"  stockings;*' 


92— Omega  Oil  Co.  v.  Weschler, 
71  N.  Y.   Supp.  983. 
93 — Barlow  &  Jones  v.  Johnson, 

7  P.  R.  395. 

94 — Ex  parte  Lorenz,  89  Off. 
Gaz.    2067. 

95— Chancellor  of  Oxford  Uni- 
versity V.  Wilmore-Andrews  Pub. 
Co..  101  Fed.  Rep.  443. 

96— Davis  v.  Kendall,  2  R.  I. 
566;  Davis  v.  Kennedy,  13  Grant 
Up.   Can.  Ch.  523. 

97— Roberts  v.  Sheldon.  Fed. 
Case  No.  11,916;  18  Off.  Gaz.  1277; 

8  Biss.  398. 

98— Smith  v.  Mason,  W.  R. 
(1875)    p.   62. 

99— M.  J.  Breitenbach  Co.  v. 
Spangenberg,  131  Fed.  Rep.  160. 

1 — Kyle  V.  Perfection  Mattress 
Co.,  127   Ala.   39,   28  So.  Rep.  545. 

2— Taylor  v.  Carpenter  (1),  3 
Stoi'y.  458. 

3 — Lyman  v.  Burns,  47  Off.  Gaz. 
660. 

4 — Van  Horn  v.  Coogan,  52  N.  J. 
Eq.  380;   28  Atl.  Rep.  788. 

5 — Hier  v.  Abrahams,  82  N.  V. 
519;   37  Am.  Rep.  589. 


6 — Clotworthy  v.  Schepp,  42  Fed. 
Rep.  62. 

7— Thomas  G.  Plant  Co.  v.  May 
Co..  44  C.  C.  A.  534,  105  Fed.  Rep. 
375;  Thomas  G.  Plant  Co.  v.  May 
Co.,  100  Fed.  Rep.  72. 

8 — Kostering  v.  Seattle  Brewing 
&  Malting  Co.,  54  C.  C.  A.  76,  116 
Fed.  Rep.  6^0. 

9 — Morse  v.  Worrell,  10  Phila. 
168. 

10 — Barrows  v.  Knight,  6  R.  I. 
434;    Cox,  Am.   Tr.   Cas.   238. 

11 — Ex  parte  Kinney.  72  Off, 
Gaz.  1349. 

12 — Royal  Baking  Powder  Co.  v. 
Raymond,  70  Fed.  Rep.  376;  Ray- 
mond v.  Royal  Baking  Powder  Co., 
85  Fed.  Rep.  231,  29  C.  C.  A.  245. 

13 — Ex  parte  Grand  Rapids 
School  Furniture  Co.,  87  Off.  Gaz. 
1957. 

14 — Enoch  Morgan's  Sons  Co.  v. 
Wendover,  43   Fed.   Rep.  420. 

15 — Pennsylvania  Salt  Mfg.  Co. 
V.  Meyers,  79  Fed.  Rep.  87. 

16 — Hirst  V.  Denham,  L.  R.  14 
Eq.   542. 

17 — Shaw  Stocking  Co.  v.  Mack. 
12  Fed.  Rep.   707. 


104 


HOPKINS   ON    TRADEMARKS, 


:§42 


"Silver  Grove,"  whiskey ;i8  "Six  Little  Tailors,"  tailor- 
ing firm's  name;^^  "Slate  Roofing,"  paint ;-^  "Sliced  Ani- 
mals," toysp^  "Social  Register,"  directory ;2-  "Star," 
shirts;-^  iron,^-*  oil,-^  soap,^^  lead  pencils,-^  tobacco ;2^  "St. 
James,"  newspaper,-'^  or  cigarettes  ;^^  "Sunlight," 
soap;^^  "Swan  Down,"  complexion  powder i^^  ''Sweet 
Caporal,"  cigarettes ;^^  "Sweet  Opopouax  of  Mexico," 
perfume ;^^  "Syrup  of  Red  Spruce  Gum,"  medicine.^'^ 

"Tamar  Indien,"  lozenges;^"  "The  Good  Things  of 
Life,"  periodical ;^^  "The  Nile,"  playing  cards  registered 
as  a  print ;^^  "Tidal  Wave,"  tobacco i^^  "Tivoli,"  beer;'''* 
"Trilby,"  gloves ;^i  "Twin  Brothers,"  yeast.''^ 

"Uneeda,"  biscuit.^^ 


18— Seltzer  v.  Powell,  8  Phila. 
296. 

19 — Mossier  v.  Jacobs,  65  111. 
App.  571. 

20 — Re  Glines,  8  Off.  Gaz.  435. 

21— Selchow  V.  Baker,  93  N.  Y. 
59. 

22 — Social  Reg.  Ass'n  v.  Howard, 
60  Fed.  Rep.  270;  67  Off.  Gaz.  1448. 

23 — Morrison  v.  Case,  9  Blatchf. 
548;  2  Off.  Gaz.  544;  Fed.  Case  No. 
9845;  Hutchinson  v.  Blumberg,  51 
Fed.  Rep.  829;  Hutchinson  v.  Cov- 
ert, 51  Fed.  Rep.  832. 

24 — Dixon  v.  Jackson,  2  Scot.  L, 
Rep.  188. 

25 — Re  American  Lubricating 
Oil  Co.,  9  Off.  Gaz.  687. 

26 — Re  Cornwall,  12  Off.  Gaz 
138. 

27 — Faber  v.  Hovey,  Codd.  Dig. 
79,  242;    Seb.   481. 

28 — Liggett  &  Myer  Tob.  Co.  v. 
Sam  Reid  Tob.  Co.,  155  Mo.  843; 
Liggett  &  Myer  Tob.  Co.  v.  Hynes, 
20  Fed.  Rep.  883. 

29— Giblett  v.  Read,  9  Mod. 
459;  Seb.  3;  Ex  parte  Foss,  Re 
Baldwin,  30  L.  T.  354;  2  DeG.  &  J. 
230;  27  L.  J.  Bkptcy.  17;  4  Jur.  N. 


S.  522;   21  L.  T.  30;   Seb.  159. 

30— Kinney   v.   Basch,    Seb.    542. 

31 — Lever  Bros.  (Ltd.)  v.  Pas- 
neld,   88   Fed.  Rep.   484. 

32— Tetlow  V.  Tappan,  85  Fed. 
Rep.    774. 

33 — Kinney  Tob.  Co.  v.  Mailer, 
53  Hun,  340;  6  N.  Y.  Supp.  389; 
Hornbostel  v.  Kinney,  110  N.  Y. 
94,  17  N.  E.  Rep.  666. 

34— Smith  v.  Woodruff,  48  Barb. 
438. 

35— Kerry  v.  Toupin,  60  Fed. 
Rep.  272. 

36— Grillon  v.  Guenin,  W.  N. 
1877,   p.   14. 

37— Stokes  v.  Allen,  9  N.  Y. 
Supp.  846;   56  Hun,  526. 

38 — Ex  parte  United  States 
Playing  Card  Co.,  82  Off.  Gaz.  1209. 

39— Sorg  V.  Welsh,  16  Off.  Gaz. 
910. 

40 — Berliner  Brauerei  Gesell- 
schaft  V.  Knight,  W.  N.  1883,  p.  70. 

41— Re  Holt  &  Co.'s  Trademark 
(C.  A.),  L.  R.    (1891)   1  Ch.  711. 

42— Burton  v.  Stratton,  12  Fed. 
Rep.  696. 

43 — National  Biscuit  Co.  v. 
Baker,  95  Fed.  Rep.  135. 


§43] 


WHAT    CONSTITUTES   A   VALID   TRADEMARK. 


105 


*'Valvoline,"  lubricating  oil;**  **Vitascope,"  ma- 
chine.'*^ 

** Vulcan,"  matches.**' 

"Waverly,"  bicycles;*^  "Willougliby  Lake,"  scythe- 
stones;***  Wi  star's  Balsam  of  Wild  Cherry,"  medicine.** 

"Yankee,"  soap.^*^ 

§  43.  Generic  terms  judicially  defined.— It  is  confusing 
to  the  student  to  be  told  that  words  indicating  quality 
cannot  be  a  valid  trademark,  and  yet  to  be  confronted 
by  the  physical  fact  and  judicial  dictum  that  the  highest 
function  of  the  trademark  is  its  indication  of  quality. 
In  a  leading  case  Mr.  Justice  P'ield  said  that  a  trademark 
is  **a  sign  of  the  quality  of  the  article ;"^^  and  in  the  lead- 
ing case  of  Amoskeag  Manufacturing  Co.  v.  Spear,  the 
learned  court  says  that  the  trademark  of  a  manufacturer 
*'is  an  assurance  to  the  public  of  the  quality  of  his 
goods.  "^^     In  the    same    opinion,    however,    the    judge 


44 — Leonard  v.  White's  Golden 
Lubricator  Co.,  38  Fed.  Rep.  922; 
Leonard  v.  "SVells,  L.  R.  26  Ch.  D. 
288.  Per  contra.  Re  Horsburgh, 
53  L.  J.  Ch.  237. 

45 — Vitascope  Co.  v.  U.  S.  Phon- 
ograph Co.  83  Fed.  Rep.  30. 

46 — Taendsticksfabriks  Antiebo- 
laget  Vulcan  v.  Myers,  139  N.  Y. 
364. 

47 — Ex  parte  Indiana  Bicycle 
Co.,  72  Off.  Gaz.  654. 

48— Pike  IMfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed.  Rep.  896. 

49— Fowle  V.  Spear,  7  Pa.  L.  J. 
176. 

50 — ^Williams  v.  Adams,  8  Biss. 
452;  Fed.  Case  No.  17711;  AVil- 
liams  V.  Spence,  25  How.  Pr.  366; 
Williams  v.  Johnson,  2  Bos.  1. 

51 — Manhattan  Medicine  Co.  v. 
Wood,  108  U.  S.  218-222. 

52 — Amoskeag  Mfg.  Co.  v.  Spear 
(1849).  2  Sand.  S.  C.  599;  Cox,  87; 
Seb.  100. 


In  a  recent  case  Judge  Bradford 
has  called  attention  to  the  use  of 
the  word  "quality"  in  the  cases, 
and  distinguished  its  two  differ- 
ent meanings,  in  the  following 
language: 

"A  trademark  is  designed  to  en- 
able one  legitimately  to  build  up 
or  protect  his  business,  but  not  to 
deprive  others  of  the  right  to  use 
necessary  or  proper  means  for  car- 
rying on  an  honorable  competi- 
tion in  trade.  No  one  has  a  right 
to  appropriate  a  sign  or  a  symbol 
which,  from  the  nature  of  the  fact 
it  is  used  to  signify,  others  may 
employ  with  equal  truth,  and  there- 
fore have  an  equal  right  to  employ 
for  the  same  purpose.  Canal  Co. 
V.  Clark,  13  Wall.  311,  324.  Hence 
no  one  can  acquire  an  exclusive 
right  to  the  use,  as  a  trademark, 
of  a  generic  name,  or  word,  which 
is  merely  descriptive  of  an  article, 
or   a  sign,   symbol,   figure,   letter, 


106 


HOPKINS   ON   TRADEMARKS. 


[§43 


(Duer)  observes  that  the  manufacturer  *'  has  no  right  to 
appropriate  a  sign  or  symbol  which,  from  the  nature  of 
the  fact  which  it  is  used  to  signify,  others  may  employ 
with  equal  truth,  and  therefore  have  an  equal  right  to 
employ  for  the  same  purpose.  Were  such  an  appropria- 
tion to  be  sanctioned  by  an  injunction,  the  action  of  a 
court  of  equity  would  be  as  injurious  to  the  public  as  it 
is  now  beneficial;  it  would  have  the  effect  in  many  in- 
stances of  creating  a  monopoly  in  the  sale  of  particular 


brand,  form  or  device,  which  either 
on  its  face  or  by  association  indi- 
cates or  denotes  merely  grade, 
quality,  class,  shape,  style,  size, 
ingredients  or  composition  of  an 
article  or  a  word  or  words  in  com- 
mon use  designating  locality,  sec- 
tion or  region  of  country.  The 
word  'quality'  is  used  in  different 
senses  in  the  cases.  It  is  employed 
in  some  to  denote  the  grade,  ingre 
dients  or  properties  of  an  article, 
and  in  others  to  indicate  generally 
the  merit  or  excellence  of  an  ar- 
ticle as  associated  with  or  coming 
from  a  certain  source.  While  there 
can  be  no  valid  trademark  as  de- 
noting quality  when  used  merely 
in  the  former  sense,  there  may  be 
a  valid  trademark  as  indicating 
quality  when  used  in  the  latter 
sense.  Thus  in  McLean  v.  Flem- 
ing, 96  U.  S.  245-253,  the  court 
said: 

"  'Such  a  proprietor,  if  he  owns 
or  controls  the  goods  which  he  ex- 
poses to  sale,  is  entitled  to  the  ex- 
clusive use  of  any  trademark 
adopted  and  applied  by  him  to  the 
goods  to  distinguish  them  as  being 
of  a  particular  manufacture  and 
quality,'    etc. 

"In  Medicine  Co.  v.  Wood,  108 
U.  S.  218,  222;  2  Sup.  Ct.  439,  tha 
court  said: 


"  'He  may  thus  notify  the  public 
of  the  origin  of  the  article  and 
secure  to  himself  the  benefits  of 
any  particular  excellence  it  may 
possess  from  the  manner  or  mate- 
rials of  its  manufacture.  His 
trademark  is  both  a  sign  of  the 
quality  of  the  article  and  an  as- 
surance to  the  public  that  it  is  a 
genuine  product  of  his  manufac- 
ture.' 

"In  Menendez  v.  Holt,  128  U.  S. 
514,  520;  9  Sup.  Ct.  144,  the  court, 
speaking  of  the  words  'La  Favo- 
rita'  as  applied  to  flour,  said: 

"  'It  was  equivalent  to  the  signa- 
ture of  Holt  &  Co.  to  a  certificate 
that  the  flour  was  the  genuine  ar- 
ticle which  had  been  determined 
by  them  to  possess  a  certain  de- 
gree of  excellence.  .  .  .  And 
the  fact  that  flour  so  marked  ac- 
quired an  extensive  sale,  because 
the  public  discovered  that  it  might 
be  relied  on  as  of  a  uniformly 
meritorious  quality,  demonstrates 
that  the  brand  deserves  protec- 
tion rather  than  it  should  be  de- 
barred therefrom,  on  the  ground, 
as  argued,  of  being  indicative  of 
quality  only.'  " 

Dennison  Mfg.  Co.  v.  Thomas 
Mfg.  Co.,  94  Fed.  Rep.  651-657. 


§43]  WHAT   CONSTITUTES   A   VALID   TRADEMARK.  107 

goods  as  exclusive  as  if  secured  by  a  patent,  and  freed 
from  any  limitation  of  time." 

In  another  early  case  the  chancellor  observed:  "In 
respect  to  words,  marks  or  devices  which  do  not  denote 
the  goods  or  property  or  particular  place  of  business  of 
a  person,  but  only  the  nature,  kind  or  quality  of  the  arti- 
cles in  which  he  deals,  ...  no  property  in  such 
words,  marks  or  devices  can  be  acquired.  There  is  ob- 
viously no  good  reason  why  one  person  should  have  any 
better  right  to  use  them  than  another.  They  may  be 
used  by  many  different  persons  at  the  same  time,  in  their 
brands,  marks  or  labels  on  their  respective  goods,  with 
perfect  truth  and  fairness.  They  signify  nothing,  when 
fairly  interpreted,  by  which  any  dealer  in  a  similar  ar- 
ticle could  be  defrauded. '  '^  And  in  more  recent  cases  the 
rule  has  been  explained  in  somewhat  similar  terms.  *'It 
is  true  that  no  one  can  appropriate  as  a  trademark  the 
commercial  name  of  an  article  which  every  man  has  the 
right  to  make  and  sell."- 

**No  manufacturer  can  acquire  a  special  property  in 
an  ordinary  term  or  expression,  the  use  of  which  as  an 
entirety  is  essential  to  the  correct  and  truthful  designa- 
tion of  a  particular  article  or  compound.  The  courts 
have  gone  a  long  way,  and  with  plain  justice,  in  protect- 
ing the  honest  and  enterprising  manufacturer  of  any 
good  and  useful  article  from  the  unscrupulous  pirating 
of  his  special  reputation;  but  they  have  been  equally 
careful  to  prevent  any  attempted  monopoly  of  that  which 
is  common  to  all."^ 

''Nor  can  a  generic  name,  or  a  name  merely  descrip- 
tive of  an  article  of  trade,  of  its  qualities,  ingredients  or 
characteristics,  be  employed  as  a  trademark,  and  the  ex- 
clusive use  of  it  be  entitled  to  legal  protection.    No  one 

1— stokes  V.  Landgraff,  17  Barb.  Phila.  226;  Price  &  Steuart,  423, 
608;    Cox,  137;    Seb.   121.  424. 

2 — Dreydoppel     v.      Young,     14         3 — Town  v.   Stetson,  5  Abb.  Pr. 

N.  S.  218;  Cox,  514,  515. 


108  HOPKINS   ON   TRADEMARKS.  [§44 

can  claim  protection  for  the  exclusive  use  of  a  trade- 
mark or  tradename  which  would  practically  give  him  a 
monopoly  in  the  sale  of  any  goods  other  than  those  pro- 
duced or  made  by  himself.  If  he  could,  the  public  would 
be  injured  rather  than  protected,  for  competition  would 
be  destroyed."^ 

The  fact  that  the  article  to  which  the  trademark  is 
applied  has  obtained  such  a  wide  sale  that  the  mark  has 
become  indicative  of  quality,  as  well  as  of  origin  and 
ownership,  is  not  of  itself  sufficient  to  render  the  mark 
puhlici  juris  and  so  deprive  its  owner  of  the  right  to  re- 
lief against  infringers.^ 

§  44.  The  name  given  an  unpatented  invention  by  the 
inventor.— Such  names  clearly  should,  if  otherwise  unob- 
jectionable, be  treated  as  valid  trademarks  in  the  hands 
of  the  inventor  or  his  assigns.  Under  the  rule  discussed 
in  the  next  section,  if  the  inventor  patents  his  invention, 
he  cannot  lengthen  his  monopoly's  duration  by  applying 
a  trademark  to  the  patented  article;  his  right  to  the 
trademark  expires  with  the  life  of  the  letters  patent. 
Where  he  elects  to  dedicate  his  invention  to  the  public, 
his  right  to  adopt  a  trademark  for  such  specimens  as  he 
himself  may  manufacture,  is  obvious.  But  the  name  by 
which  he  distinguishes  his  invention,  being  the  necessary 
name  of  the  article,  cannot  be  used  by  another,  holding 
no  assignment  from  the  inventor.^ 

§  45.  Necessary  name  of  a  product.— The  necessary 
name  of  a  product,  natural  or  manufactured,  cannot  be  a 
trademark,  for  the  reasons  we  have  discussed.  This  is 
true  of  goods  manufactured  under  a  patent.  The  descrip- 
tive name  by  which  they  are  known  during  the  life  of 
the  letters  patent  becomes  their  popular  name  in  the 

4— Delaware     &    Hudson    Canal  see  Mfg.  Co.,  138  U.   S.  537,  547; 

Co.  V.   Clark,  13   Wall.   311-323;    5  Burton   v.   Stratton,   12  Fed.   Rep. 

Am.    L.   T.    135;    1    Off.    Gaz.    279;  696. 

Seb.  327.  6— H.  B.  Chaffee  Mfg.  Co.  v.  Sel- 

5 — Lawrence  Mfg.  Co.  v.  Tennes-  chow,  131  Fed.  Rep.  543. 


§  45]  WHAT   CONSTITUTES   A    VALID   TRADEMARK.  109 

trade— the  name  by  which  tliey  are  necessarily  known 
and  distinguished.  "VVlien,  therefore,  the  protection  of 
the  patent  has  ex})ired  the  name  is  puhlici  juris,  and  the 
manufacturer  under  the  letters  patent  can  claim  no  trade- 
mark in  it.^ 

Thus,  the  word  ''Linoleum"  as  applied  to  a  kind  of 
floor  covering,^  '* Singer"  applied  to  sewing  machines,** 
and  ''Lanoline"  applied  to  a  wool-fat  preparation,^** 
were  held  to  be  puhlici  juris  upon  the  exj)iration  of 
the  letters  patent  covering  the  articles  to  which  they 
were  applied. 

Analogous  to  this  class  of  cases  is  that  where  new 
combinations  of  old  elements  are  found,  and  it  is  sought 
to  distinguish  such  a  new  compound  or  combination  by 
joining  the  descriptive  names  of  its  constituent  elements. 
This  is  best  illustrated  by  a  case  where  the  words  claimed 
as  trademark  were  ' '  Ferro-phosphorated  Elixir  of  Cali- 
saya  Bark,"  which  claim  was  distinctly  negatived  by 
the  New  York  Court  of  Appeals,  Folger,  J.,  saying: 
''They  may  not  be  appropriated  by  one  to  mark  an 
article  of  his  manufacture,  when  they  may  be  used 
truthfully  by  another  to  inform  the  public  of  the  ingre- 
dients which  make  up  an  article  made  by  him."^^  For 
this  reason  the  name  "Acid  Phosphate"  applied  to  a 
medicinal  preparation,^ ^  and  "Indurated  Fibre"  applied 
to  wares  made  of  wood-pulp,^-^  are  not  valid  trademarks; 
and  the  word  "Bromo-Quinine"  was  refused  registration 

7 — Centaur  Co.  v.   Robinson,  91  U.  S.  205;  Singer  Mfg.  Co.  v.  June, 

Fed.  Rep.  889;   Same  v.  Neathery,  163  U.  S.  169. 

91  Fed.  Rep.  891;  Same  v.  Hughes  10 — JafEe  v.  Evans  &  Sons,  Ltd., 

Bros.   Mfg.   Co.,  91  Fed.  Rep.   901.  75  N.  Y.   Supp.   257. 

The    cases    are    collected,    ante,  §  11 — Caswell  v.  Davis,  58  N.   Y. 

39.  223-233. 

8 — Linoleum  Mfg.  Co.  v.  Nairn,  12 — Rumford     Chemical     Works 

L.  R.  7  Ch.  D.  834;    47  L.  J.  Ch.  v.  Muth,  35  Fed.  Rep.  524. 

430;  38  L.  T.  N.  S.  448;   26  W.  R.  13— Indurated      Fibre     Co.,      v. 

463;  Seb.  536.  Amoskeag  Fibre  Co.,  37  Fed.  Rep. 

9— Singer  Mfg.  Co.  v.  Bent,  163  695. 


110  HOPKINS   ON   TRADEMARKS.  [§  45 

as  a  trademark  for  medicines,^*  as  was  also  the  word 
' '  Ferro-Manganese  "  as  a  mark  for  mineral  waters/  ''*  and 
the  word  ''Bromo-Celery"  for  a  medicinal  preparation.^® 

There  are  cases,  however,  where  such  words  or  combi- 
nations of  words  have  been  held  not  to  be  descriptive. 
Thus  the  word  "Cocoaine"  as  applied  to  a  hair  wash 
compounded  from  cocoanut  oil  and  other  ingredients,^^ 
and  *' Magnetic  Balm"  as  applied  to  a  medicinal  com- 
pound,^'^  have  been  upheld  as  valid  trademarks.  The 
word  ''Electro-Silicon"  applied  to  a  polishing  compound 
has  also  been  upheld,^  ^  and  it  appears  very  clear  that  the 
words  ''Magnetic"  or  "Electric"  as  used  in  the  two 
cases  last  referred  to  are  purely  arbitrary  and  fanciful. 

We  have  noted  that  the  patent  office  has  refused  regis- 
tration to  an  api)licant  offering  the  word  "Bromo-Qui- 
nine"  as  the  name  of  a  medicinal  preparation.  This 
decision  is  in  hopeless  conflict  with  some  of  the  adjudi- 
cated cases.  The  word  "Bromidia,"  as  a  trademark  for 
a  chemical  combination  of  chloral  hydrate,  bromide  of 
potassium  and  other  substances,  was  admitted  to  regis- 
tration and  subsequently  upheld  as  valid,  the  court  upon 
final  hearing  saying  that  the  word  "has  no  meaning 
whatever  except  as  connected  with  complainants'  busi- 
ness, and  as  associated  with  and  indicative  of  a  soothing 
cxr  soporific  mixture  prepared  and  sold  by  them. '  '^"  The 
word  "  Bromo-Caffeine "  was  admitted  to  registration, 
and  upheld  judicially,  the  Court  of  Appeals  of  New  York 
saying,  per  Peckham,  J.,  "We  think  there  is  a  distinc- 
tion between  the  facts  in  this  case  and  that  of  Caswell 

14 — Re  Grove,  Newton,  Dig.  192;  18 — Smith   v.    Sixbury,   25    Hun, 

8.  c.  Ibid.  191;    67  Off.  Gaz.  1447.  232. 

15 — Re     Excelsior     Spring     Co.,  19 — Electro-Silicon  Co.  v.  Trask, 

Newton,  Dig.   153.  59    How.    Pr.    189;    Electro-Silicon 

16 — Re   Bromo-Celery  Co.,  New-  Co.  v.  Hazard,  29  Hun,  369. 

ton.  Dig.   190.  20 — Battle  &  Co.  v.  Finlay  (pre- 

17 — Burnett  v.  Phalon,  3  Keyes,  liminary    hearing),    45    Fed.    Rep. 

594.  796,   (final  hearing)    50  Fed.  Rep. 

106. 


§46j  WHAT   CONSTITUTES    A    VALID   TR.UJEMARK.  Ill 

V.  Davis.^^  In  this  case  the  term  perhaps  suggests  that 
some  one  among  the  hundreds  of  substances  that  bromine 
may  combine  witli  lias  been  used  in  such  combination 
together  witli  calTeine.  There  are,  however,  some  seven 
different  ingredients  in  the  plaintiff's  preparation,  and 
there  is  no  free  bromine  among  them,  and  there  is  no 
evidence  as  to  what  the  substance  is  which  the  bromine 
(if  any)  had  combined  with  before  beijig  used  in  the 
preparation,  and  so  it  is  plain  that  the  words  'Bromo- 
Caffeine'  do  not  in  fact  describe  the  ingredients  or  even 
give  any  clear  general  idea  as  to  what  they  are."--  It  is 
the  general  rule  that  ''when  an  article  is  made  that  was 
theretofore  unknown,  it  must  be  christened  with  a  name 
by  which  it  can  be  recognized  and  dealt  in;  and  the  name 
thus  given  to  it  becomes  public  property,  and  all  who 
deal  in  the  article  have  the  right  to  designate  it  by  the 
name  by  which  alone  it  is  recognizable."-^ 

Under  peculiar  circumstances  a  mark,  otherwise  a 
valid  trademark,  will  become  the  common  property  of 
two  or  more  merchants,  each  of  whom  may  have  a  right 
to  its  use,  provided  he  so  uses  it  as  not  to  pass  off  his 
goods  as  those  of  one  of  the  others  entitled  to  use  the 
mark.  Thus  a  plaintiff  was  refused  an  injunction  re- 
straining the  use  of  the  mark  ''Aramingo  Check"  to  des- 
ignate printed  cloth  made  at  the  Aramingo  Mills,  where 
the  defendant  showed  that  the  cloth  sold  by  him  under 
the  mark  was  the  product  of  the  same  mills,  and  the  la- 
bels used  by  the  respective  parties  differed  in  size  and 
color  so  that  confusion  could  not  result  from  their  use.^^ 

§  46.  Marks  common  to  the  trade.— In  a  considerable 
number  of  cases,  marks  have  been  involved  which,  wholly 
or  in  part,  are  common  to  the  particular  trade  in  which 

21—58  N.  Y.  223,  cited  supra.        Battery  Co.  v.  Western  Elec.  Co., 
22— Keasbey  v.  Brooklyn  Chemi-     23  Fed.  Rep.  276. 
cal  Works,  142  N.  Y.  467-476.  24— Colloday   v.   Baird,    4    Phila. 

23— Wallace,     J.,     in     Leclanche    139;     Cox'    American     Trademark 

Cases,  257. 


112  HOPKINS   ON   TRADEMARKS.  [§47 

they  are  used.  It  is  obvious  that  this  condition  must,  in 
many  cases,  have  originated  in  infringement,  or  an  at- 
tempt to  prey  upon  the  mark  or  dress  of  the  first  trader 
who  adopted  it:  and  that,  in  time,  it  became  impossible 
to  tell  to  whom  the  mark  or  dress  belonged.  Thus  the 
"sawbuck"  or  ''cross-bar"  mark  or  brand  has  been 
found  common  to  the  tea-trade.-^ 

§  47.  The  trademarked  article  not  a  trademark.— It 
is  obvious  that  if  a  commercial  article  itself  could  consti- 
tute a  trademark,  there  would  be  little  use  for  patent 
laws.  As  Judge  Cai*penter  said,  "in  the  very  nature  of 
the  case,  *  *  *  the  trademark  must  be  something 
other  than,  and  separate  from,  the  merchandise."-^ 

Nor  can  the  article,  by  being  colored,  constitute  a 
trademark.  This  is  illustrated  by  the  case  in  which  it 
was  sought  to  protect  a  bronzed  horse-shoe  nail  as  a 
trademark.^"  It  is  again  illustrated  by  the  attempts  to 
hold  as  a  trademark  a  "distinctively  colored  streak  in  a 
wire  rope,"-*^  or  a  "rose-colored  metallic  capsule"  for  a 
champagne  bottle.^^ 

§  48.  Packages  as  trademarks.— It  is  equally  obvious 
that  a  commercial  package  cannot  be  a  trademark.  In 
one  of  the  early  cases  upon  this  rule.  Judge  Johnson  said: 
'  *  It  appears  that  the  ornamental  tin  pail  which  the  plain- 
tiff employs  is  a  common  article  in  commerce,  and  that 
pails  made  of  tin,  ornamented  or  unomamented,  are  and 
have  long  been  in  use  for  all  such  purposes  as  any  one 
chose  to  apply  them  to.  The  question  whether  any  one 
can  seize  upon  such  an  article  and  make  title  to  its  exclu- 
sive use  for  a  special  purpose,  by  calling  it  a  trademark, 
must  be  far  from  clear  in  favor  of  the  claimant.     The 

25— Castle     v.      Siegfried,      103  28— A.  Leschen  &  Sons  Rope  Co. 

Calif.  71,  37  Pac.  Rep.  210.  v.  Broderick  &  Bascom  Rope  Co., 

26— Davis  v.  Davis,  27  Fed.  Rep.  134  Fed.  Rep.  571,  Affirming  s.  c. 

490,  492.  123   Fed.   Rep.   152. 

27_putnam  Nail  Co.  v.  Dulaney,  29— Mumm  v.  Kirk,  40  Fed.  Rep. 

140  Pa.   205.  589. 


§  49]  WHAT    CONSTITUTES   A   VALID   TRADEMARK.  113 

forms  and  materials  of  packages  to  contain  articles  of 
merchandise,  if  such  claims  should  be  allowed,  would 
be  rapidly  taken  up  and  approin-iated  by  dealers,  until 
some  one,  bolder  than  the  others,  might  go  to  the  very 
root  of  things,  and  claim  for  his  goods  the  primitive 
brown  paper  and  tow  string,  as  a  peculiar  property.  It 
will  be  observed,  that  it  is  not  a  mark  at  all  which  is 
claimed,  but  the  whole  enveloping  package,  the  whole 
surface  of  which  is  covered  by  the  ornamental  pattern. "**'' 

Nor  can  a  package  be  made  a  trademark  by  being  col- 
ored."'^ Judge  Coxe  concisely  embodied  the  rule  in  these 
words:  **The  trend  of  the  law  is  strongly  towards  the 
proposition  that,  in  ordinary  circumstances,  the  adoption 
of  packages  of  peculiar  fonn  and  color  alone,  unaccom- 
panied by  any  distinguishing  symbol,  letter,  sign,  or  seal, 
is  not  sufficient  to  constitute  a  trademark.  "•"- 

§  49.  Method  of  arranging  goods  as  trademark.— 
The  arrangement  of  goods  in  a  package  can  not  consti- 
tute a  trademark.  Judge  Welker  said:  ''The  complain- 
ants could  not  obtain  a  trademark  *  *  *  in  the  man- 
ner in  which  the  gun  might  be  placed  in  the  boxes.  "^^ 
Judge  Carpenter  made  the  same  ruling  with  reference  to 
the  arrangement  of  cakes  of  soap  in  red  and  yellow  wrap- 
pers, the  colors  alternating.^* 

The  importance  of  these  rulings  has  vastly  decreased 
of  late  years,  owing  to  the  fact  that  all  of  these  matters, 
packages,  labels,  and  methods  of  packing,  are  now  under- 
stood to  relate  only  to  proof  of  fraudulent  intent  in  com- 
petition. No  technical  trademark  right  exists  in  either  of 
them;  in  the  abstract,  they  are  each  of  common  right. 
But  like  size,  shape,  form  and  color,  each  readily  becomes 

30— Harrington    v.    Libby,    Fed.  Co.  v.  Rouss,  40  Fed.  Rep.  5S5,  587 

Case  No.  6,107.  12  Off.  Gaz.  188.  33— Adams    v.    Heisel,    31    Ferl. 

31— Philadelphia    Novelty     Mfg.  Rep.    279. 

Co.   V.    Blakesley    Novelty   Co.,   40  34 — Davis  v.  Davis,  27  Fed.  Rep. 

Fed.  Rep.  588.  490. 

32— Philadelphia    Novelty    Mfg. 
8 


114  HOPKINS   ON   TRADEMARKS.  [§  50 

subsen'ient  as  an  instrumentality  of  fraud  where  unfair 
competition  is  intended.  They  enter  into  the  litigation 
of  today,  not  upon  the  theory  that  property  is  claimed  in 
them,  but  merely  as  badges  of  fraud. 

§  50.  Words  taken  from  the  dead  languages.— Words 
from  the  dead  languages  have  frequently  been  applied  to 
merchandise  and  sustained  as  valid  trademarks,  as,  for 
example,  the  Greek  ''Eureka"  as  a  mark  for  shirts^^  or 
for  a  fertilizing  material,'"^'  and  the  Latin  "Excelsior"  for 
stoves^^  or  soap.^^  The  Latin  phrase  ''Ne  Plus  Ultra" 
was  invalid  as  a  trademark  solely  because  the  plaintiff 
did  not  show  exclusive  user  in  himself,  and  the  words 
and  an  accompanying  device  were  found  to  be  common 
to  the  trade.^^  It  has  been  said  by  the  Canadian  supreme 
court  that  there  can  be  property  in  a  word  of  a  dead  lan- 
guage even  if  it  be  expressive  of  quality,^"  but  this  dictum 
is  incorrect,  as  appears  from  the  authorities  reviewed  in 
the  next  succeeding  section.  A  descriptive  word  from  a 
dead  language  cannot  be  other  than  a  generic  term  when 
used  as  a  mark  for  goods.  Thus,  on  an  application  for 
registration  for  the  word  ''Sanitas"  for  medicines,  Kay 
J.,  remarked:  ''The  truth  is  that  if  this  word  were  ap- 
plied to  medicines,  it  would  mean  to  any  ordinary  person 
that  the  medicines  were  health  medicines;  that  is,  health- 
giving  medicines;  and  that  is  descriptive  of  the  quality 
or  of  the  effect  of  the  use  of  these  medicines.  How  is  it 
possible  that  it  is  not  descriptive?"^^ 

35_Ford  v.  Foster,  L.  R.  7  Ch.  39— Beard    v.    Turner,    13    L.   T. 

D    611.  N.  S.  746;   Seb.  251. 

36— Alleghany  Fertilizer    Co.    v.  40— Partlo   v.    Todd,   17    Can.    S. 

Woodside,     1     Hughes,    115,    Fed.  C.  R.  196. 

Case  No.   206.  41 — Re   Sanitas   Co.,   4   R.  P.   C. 

37_Sheppard     v.       Stuart,      13  533;    58  L.  T.  166;    Cartmell,  305. 

Phila.  117;  Price  &  Steuart,  193.  Similar   reasoning    forbade    the 

38 — Braham  v.  Bustard,  1  H.  &  registration   of   "Somatose"    as    a 

M.    447.     "Excelsior"     applied     to  trademark  for  a  nourishing  meat 

gun-cotton  goods  was  not  upheld,  product;    the   Greek   "Soma,"  gen- 

Steihthal  v.  Samson,  Seb.  546.  itive  "Somatos,"  being  the  equiva- 


§  51 J  WHAT    CONSTITUTES   A    VALID   TRADEMARK.  115 

§  51.  Words  and  phrases  from  modem  foreign  lan- 
guages.—This  topic  has  been  fruitful  of  conflicting  hold- 
ings. It  is  not  settled  what  character  of  words  so  taken 
will  be  sustained  as  valid  trademarks. 

The  English  courts  have  consistently  adhered  to  the 
rule  announced  by  Chitty,  J.,  in  Davis  v.  Stribolt:  ''I 
am  of  the  opinion  that  in  reference  to  an  article  produced 
in  a  foreign  countr}'  and  imported  into  England,  where 
it  was  previously  unknown  and  without  a  name,  the  word 
used  in  that  foreign  countrj^  as  the  common  term  to  de- 
scribe or  denote  the  article  is  not  a  fancy  name  within 
the  meaning  of  the  act."  For  these  reasons  the  Norwe- 
gian words  *'Bokel"  and  "Bokol"  (meaning  "beer") 
were  held  not  valid  as  trademarks  for  beer.^^ 

A  curious  case  is  that  of  Re  Rotherham.  The  house  of 
Rotherham  of  Coventr}^  had  long  made  and  exported 
watches  to  Tod  &  Co.  of  Alexandria,  by  whom  they  were 
sold,  such  watches  bearing  upon  their  dials  the  word 
'*Tod"  in  Arabic  characters;  "Tod"  as  an  Arabic  sub- 
stantive meaning  "A  high  mountain."  The  Arabic 
word  was  registered  as  a  trademark,  Vice-Chancellor  Ba- 
con holding  an  order  of  the  commissioners  prohibiting 
registration  of  words  in  foreign  languages  invalid.^^ 

The  phrase  "Flor  Fina  Prairie  Superior  Tabac"  was 
held  to  be  a  valid  trademark  for  cigars,"*^  as  have  been 
the  words  "Tamar  Indien"  for  lozenges,^^  "Intimidad" 
for  cigars,^«  "El  Destino,"  also  for  cigars,-*^  "El  Cabio" 


lent   of   the   English   "body;"   "so-  44 — Cope  v.  Evans,  L.  R.  18  Eq. 

mat"  being  the  root  of  many  Eng-  138;   30  L.  T.  N.  S.  292;   22  W.  R. 

lish    words    and    "ose"    a    common  453;    Seb.  433. 

English     suffix.       Re     Farben-fa-  45 — Grillon    v.     Guenin,    W.    N. 

briken  T.  M.  K.,  L.  R.  (1894)  1  Ch.  1877,  p.  14;    Seb.  532. 

D.  645.  46 — Caruncho  v.   Stephenson,   25 

42— Davis  v.   Stribolt,   59  L.    T.  Sol.  J.  929. 

S54;   Cartmell,  105.  47— Pinto  v.  Badman,  8  R.  P.  C. 

43— Re    Rotherham,    29    W.    R.  181;    Cartmell,   270. 
503;    Seb.   647. 


116  HOPKINS   ON   TRADEMARKS.  [§  51 

for  tobacco/^  and  "La  Favorita"  for  flour.^^  ''Maza- 
wattee,"  a  compound  of  the  Hindustani  words  "Maza," 
meaning  taste  or  relish,  and  the  Singalese  ''Wattee," 
meaning  garden  or  estate,  is  a  valid  trademark  because 
it  conveys  no  meaning  to  any  class  of  persons,  English, 
Hindoo  or  Singalese,  and  has  no  reference  to  the  quality 
of  the  goods/'*^ 

With  reference  to  "  Pepto-Mangan, "  used  as  a  mark 
for  a  medicinal  preparation.  Judge  Holt  has  said,  "It 
seems,  if  analyzed  by  a  person  familiar  with  the  Greek 
and  German  languages,  somewhat  descriptive,  but  I  think 
it  would  seem  to  the  general  public  to  be  an  artificial  and 
manufactured  word. '  '^^ 

The  rules  thus  far  discussed  in  this  section  do  not  seem 
to  apply  to  aboriginal  words  or  sounds.  The  word  (or 
sound)  "Oomoo, "  taken  from  the  language  of  the  Aus- 
tralian aborigines,  was  admitted  to  English  registration 
by  Chitty,  J.,  after  a  careful  consideration;''-  on  the  other 
hand,  the  word  "Kokoko,"  meaning  "owl"  in  the  lan- 
guage of  the  Chippeway  Indians,  was  refused  registra- 
tion as  a  trademark  for  cotton  goods.^^ 

It  was  held  in  a  dictum  of  the  supreme  court  of  Can- 
ada, in  the  very  thoroughly  considered  case  of  Partlo  v. 
Todd,  that  a  descriptive  foreign  word,  or  a  word  in  a 
dead  language  not  known  to  people  in  general,  because  it 
is  not  understood,  may  become  the  trademark  of  the  per- 
son who  first  uses  it  upon  a  particular  article  sold  by 
him.''^  This  theory  has  been  affirmed  by  a  New  York 
state  court  and  denied  by  Judge  Showalter  in  the  federal 
circuit  court  for  the  Northern  District  of  Illinois,  in  two 

48— Solis  Cigar  Co.  v.  Pozo,  16  52— Re  Burgoyne,    6    R.    P.    C. 

Colo.  388;   26  Pac.  Rep.  556.  227;    61  L.  T.  39;   Cartmell,  85. 

49 — Menendez  v.  Holt,  128  U.  S.  53 — Re       Jackson        Company's 

514.  Trademark,   6   R.   P.   C.   80;    Cart- 

50— Re  Densham,  L.   R.    (1895)  mell,  177. 

2  Ch.  D.  176.  54— Partlo    v.    Todd,  IT  Can.  S. 

51— M.     J.     Brietenbach    Co.    v.  C.  R.  196-213. 
Spangenberg,  131  Fed.  Rep.  160. 


§  51J  WHAT    CONSTITUTES   A    \ALID   TILVUEMARK.  117 

suits  of  the  same  complainant,  involving  the  right  to  the 
word  ''Matzoon"  as  a  trademark  for  a  food  product 
made  of  fermented  milk.  "Matzoon"  or  "Maadzoon" 
appears  to  be  the  sound  of  the  name  which  Armenians 
give  to  a  similar  article  made  of  fermented  milk  in  Tur- 
key. The  New  York  court  says:  "I  do  not  think  that 
such  a  term  can  properly  be  regarded  as  descriptive  in 
this  country.  It  would  be  absolutely  meaningless  to  all 
but  a  little  group  of  Armenians  in  the  millions  of  inhabi- 
tants of  the  United  States.  It  would  be  equally  mean- 
ingless in  most  of  Europe.  A  Choctaw  word  would  sig- 
nify just  as  much.  To  the  medical  profession,  among 
whom  the  plaintiff  sought  approval  for  his  product,  and 
to  the  drug  trade,  the  name  'Matzoon'  was  practically 
an  arbitrary  or  fanciful  designation.  It  was  not  incor- 
porated into  the  English  langage.  It  was  derived  from 
a  language  hardly  known  here,  and  to  the  vast  majority 
of  our  people  it  meant  nothing.  Hence  the  rule  upon 
which  the  defendant  relies  has  no  application  here."  It 
was  accordingly  held  to  be  a  valid  trademark.^'^  That 
this  rule  is  dangerous  to  the  law  of  trademarks  is  appar- 
ent. If  it  is  left  to  the  courts  to  say  when  a  descriptive 
word  taken  from  a  modern  foreign  language  may  or  may 
not  be  used  as  a  trademark,  practically  endless  litigation 
is  opened  to  future  generations.  The  court  forgot  the 
rule  that  a  trademark  must  be  capable  of  universal  use, 
and  knows  no  territorial  restriction.^*^  As  Chitty,  J.,  re- 
marked in  Davis  v.  Striholt:  ''If  the  argument  were 
well  founded,  the  importer  into  this  country  of  any  for- 
eign article  not  previously  known  in  this  country  could 
restrain  any  one  else  from  using  the  name  by  which  it 
was  called  in  the  country  in  which  it  was  produced.  "^^ 
Upon  the  application  to  Judge  Showalter  for  a  prelimin- 

55— Dadirrian  v.  Yacubian,  37  N.  57— Davis   v.    Stribolt,   59    L.    T. 

Y.  Supp.  611.  N.  S.  854,  cited  supra. 

56 — Subject    to    the    exceptions 
noted  ante,  §  13. 


118  HOPKINS   ON   TRADEMARKS.  [§  51 

ary  injunction  to  restrain  the  use  of  the  same  word  ' '  Mat- 
zoou,"  that  learned  court  said:  "The  strong  contention 
is  that  Dr.  Dadirrian  introduced  into  this  country  a  prod- 
uct which  was  unknown  here,  and  by  a  name  which  was 
equally  unknown,  and  that,  since  the  name  has  become 
identified  here  with  the  article  as  made  by  him  his  prop- 
erty in  the  name  should  be  recognized.  But,  as  already 
said,  the  product  was  in  fact  old,  as  was  also  the  name. 
The  ignorance  of  people  in  this  country  touching  it,  its 
uses  and  its  name,  cannot  be  treated  as  property,  and  be, 
in  a  manner,  capitalized  as  an  element  in  the  good-will 
of  this  complainant.  This  would  be  the  case  if  no  other 
dealer  was  permitted  to  tell  what  Matzoon  is,  and  what 
a  considerable  portion  of  the  human  race  has  found  it 
useful  for,  after  an  experience  with  it  under  that  name 
which,  according  to  the  record,  dates  back  some  eight 
centuries."  The  application  was  accordingly  denied, 
and  the  ruling  of  the  trial  court  was  followed  in  the  first 
circuit  and  subsequently  upheld  by  the  United  States  cir- 
cuit court  of  appeals  for  that  circuit.^^ 

The  German  word  ''Ansatz,"  meaning  ''Compound,'* 
has  been  refused  registration  as  a  trademark  for  bitters,^® 
as  have  been  the  words  "Chili  Colorow"  (meaning  red 
pepper  in  provincial  Spanish),  as  a  trademark  for  condi- 
ments.^° 

Vice-Chancellor  Shadwell  held  a  complainant  who 
marked  watches  manufactured  by  him  for  the  Turkish 
trade  with  the  Turkish  word  "Pessendede"  (meaning 
warranted)  in  Turkish  characters,  entitled  to  the  exclu- 
sive right  to  so  mark  his  watches.     This  was,  however, 

58 — Dadirrian    v.    Yacubian,    72  Selchow  v.  Chaffee  &  Selchow  Mfg. 

Fed   Rep.    1010-1014;    75   Off.    Gaz.  Co.,  132  Fed.  Rep.  996. 

1856;  followed  in  Dadirrian  v.  Ya-  59 — Re  Weisman,  Newton,    Dig. 

cubian   (2).  90  Fed.  Rep.  812.  Lat-  119. 

ter  case  affirmed  on  appeal,  Dadir-  60 — Re    Railton,     Newton,     Dig. 

rian  v.  Yacubian  (3),  98  Fed.  Rep.  213. 
872,  39  C.  C.  A.  321.     Followed  in 


§51]  WJIAT    CONSTITUTES   A    VALID   TRADEMARK.  119 

not  necessary  to  the  decision  of  the  case,  and  was  a  mere 
dictum.^^ 

The  case  of  Broadhurst  v.  Barlow  was  that  of  plaintiffs 
who  used,  beside  a  symbol  of  a  lion  in  a  scroll,  the  words 
''Exactly  12  Yards,"  in  Turkish,  Annenian  and  Greek, 
upon  the  rolls  of  cloth  made  by  them  for  exportation  to 
Greece  and  Turkey.  With  other  relief,  the  defendant 
was  enjoined  from  using  the  words  "exactly  12  yards" 
in  the  languages  used  by  plaintiffs.  This  relief  would 
seem  to  be  incidental  to  the  portion  of  the  injunction 
which  related  to  fanciful  scrollwork  used  by  both  par- 
ties.«2 

The  use  of  the  word  '  *  Grenadine "  as  a  trademark  for 
a  syrup  made  of  pomegranate  juice  was  protected  by 
injunction  against  a  defendant  who  began  the  sale  of 
another  syinip  under  the  name  of  ' '  Grenade  Syrup, ' '  not- 
withstanding the  word  "Grenade"  in  French  signifies 
"Pomegranate."  This  was  purely  a  case  of  unfair  com- 
petition.*''^ The  patent  office  has  refused  registration  for 
the  words  "Fur  Familien-Gebrauch"  (For  Family  Use) 
and  "Lawrence  Feiner  Familien-Flanner '  (Lawrence 
Fine  Family  Flannel),  but  upon  the  ground  that  they 
were  mere  words  in  common  use  and  not  distinctive.^'' 
And  it  is  now  the  fixed  rule  of  that  oflBce  that  no  descrip- 
tive words  reproduced  in  letters  from  a  foreign  language 
will  be  admitted  to  registration,  when  registration  would 
be  refused  to  their  English  equivalents.**^ 

61 — Gout  V.  Aleploglu,  6  Beavan,  tS  Fed.  Rep.  416;  Fischer  v.  Blank. 
69;  5  Leg.  Obs.  495;   Seb.  51.  Cox,   Manual,   731,   138   N.   Y.    244. 

62— Broadhurst  v.  Barlow,  W.  N.  63— Rillet  v.  Carlier,  61  Barb.  S. 
1872.  p.  212;  L.  J.  Notes  of  Cases.  ^-  ^^^'  ^^  ^^"^^  ^-  N-  S.  186;  Seb. 
p.  183;  Seb.  411.  The  use  of  labels  ^^^-  "^^^  ^'^'^^  "Ethiopian"  print- 
printed   in  several  languages  was     '^   '"    Egyptian    characters    upon 

stockings  was  protected  from  in- 
fringement, but  in  a  case  of  un- 
fair competition.  Hine  v.  Lart,  10 
Seb.  432;  Curtis  v.  Bryan,  2  Daly,  j^j.  i06-  7  L  T  41 
212;  Cox,  434,  Siegert  v.  Abbott  64-Re  Lawrence  &  Co.,  10  Off. 
(2),  Cox.  Manual,  718;  Societe  Gaz.  163;  Seb.  504. 
Anonyme  v.  Western  Distilling  Co.,         Q^—Ex  parte    Stuhmer.    86    Off. 


enjoined  in  Siegert  v.  Findlater,  L. 
R.  7  Ch.  D.  801;  Siegert  v.  Ehlers. 


120  HOPKINS   ON    TRADEMAKi:^^.  [§52 

§  52.  Words  become  generic  through  use.— A  word 
originally  fanciful  and  indicative  of  origin  or  ownership 
may  through  the  laches  of  the  owner  become  puhlici 
juris.  Thus  the  word  "  Chlorodine, "  while  originally  a 
good  trademark,  became  generic  through  the  failure  of 
the  manufacturer  to  prosecute  a  suit  brought  by  him  to 
restrain  its  use,^*^  and  because  it  had  become  the  name 
of  the  article.*^^  This,  of  course,  is  substantially  a  hold- 
ing that  the  trademark  has  been  abandoned  by  the  own- 
er's neglect.  The  American  courts  have  been  averse  to 
so  holding.  It  was  said  in  Taylor  v.  Carpenter  that  the 
court  was  "not  aware  that  a  neglect  to  prosecute,  be- 
cause one  believed  he  had  no  rights,  or  from  mere  pro^ 
crastination,  is  any  defense  at  law,  whatever  it  may  be 
in  equity,  except  under  the  statute  of  limitations  pleaded 
and  relied  on,  or  under  some  positive  statute,  like  that 
as  to  patents,  which  avoids  the  right  if  the  inventor  per- 
mits the  public  to  use  the  patent  some  time  before  taking 
out  letters."*'^  Words  primarily  indicative  of  origin  or 
ownership  remain  valid  as  trademarks  notwithstanding 
the  fact  that  the  articles  to  which  they  are  applied  may 
obtain  such  extensive  sales  that  the  marks  have  also  be- 
come indicative  of  quality.'^^ 

Gaz.  181.  In  this  case  the  appli-  ground  for  withholding  relief,  cit- 
cant  sought  registration  for  the  ing,  in  support  of  this  proposition, 
words  "Gold  Label"  produced  in  inter  alia,  the  opinion  of  Chancel- 
Hebrew  characters.  lor  Walworth  in  Smith  v.  Adams. 

66 — Browne  v.  Freeman   (1),  12  6   Paige,   435-443;     and    the    copy- 

W.  R.  305;  4  N.  R.  476.  right  case  of  Lewis  v.  Chapman.  3 

67— Browne  v.  Freeman  (2),  W.  Beavan,  133,  where  a  delay  of  six 

N.  1873,  178;   Amoskeag  Mfg.  Co.  years   was   held    to   disentitle   the 

V.    Garner,    55    Barb.    151;    6   Abb.  Plaintiff  from  relief. 

Pr.  N.  S.  265;   Cox,  541.  68— Taylor  v.  Carpenter,  2  Wood. 

In  this  case  the  controlling  fact  &  M.  1;  9  L.  T.  514;  Cox,  32. 

was    that   the    complainant's    and  69 — Burton  v.  Stratton,  12  Fed. 

defendant's    marks  were    used    on  Rep.  696-702;  Lawrence  Mfg.  Co.  v. 

different  classes    of     goods.      The  Tennessee  Mfg.  Co.,  138  U.  S.  537- 

court,  however,    expressly    names  547. 
the  laches  of  the  complainant  as  a 


§  53]  WHAT    CONSTITUTES   A    VALID    TRADEMARK.  121 

Whether  or  not  a  word  has  become  public  property,  in 
that  it  has  acquired  a  generic  meaning,  descriptive  of  a 
general  kind,  quality,  or  class  of  goods  is  a  pure  ques- 
tion of  fact  to  be  determined  from  the  evidence  in  each 
particular  caseJ'^ 

§  53.  The  use  of  generic  names  protected.— Possibly 
the  widest  deviation  from  tli(i  narrow  path  of  trademark 
protection  which  has  been  accomplished  by  the  law  of  un- 
fair competition  is  to  be  found  in  the  cases  involving  the 
deceptive  use  of  generic  terms.  The  supreme  court  of  the 
United  States  has  held  in  regard  to  the  name  of  a  person 
used  as  a  descriptive  name  of  a  patented  article,  during 
the  life  of  a  patent,  that  while  that  name  becomes  piihlici 
juris  upon  the  expiration  of  the  patent,  it  must  be  so  used 
by  manufacturers  other  than  the  original  maker  as  not 
to  deceive  the  public  into  the  belief  that  the  goods  offered 
for  sale  are  the  goods  of  such  original  maker.'^^  The 
same  rule  has  been  established  in  England.'^- 

So  it  was  held  by  Mr.  Justice  McKenna,  when  circuit 
judge,  that  ''Syrup  of  Figs"  was  entitled  to  injunctive 
protection.  He  said:  "Kespondent  urges  tliat  the  words 
*  Syrup  of  Figs'  are  descriptive,  and  that  complainant  de- 
ceives when  it  uses  them  to  designate  its  compound.  The 
deceit  does  not  appear  on  the  face  of  the  bill,  and  it 
is  unimportant  if  they  are  descriptive.  The  question  is 
now,  not  whether  complainant  has  the  exclusive  right  to 
use  the  words  'Syrup  of  Figs'  or  'Fig  Syrup,'  but  it  is 
whether  respondent  has,  by  use  of  them  and  other  words, 
and  by  the  other  imitations  alleged  and  exhibited,  so  far 
imitated  the  form  of  complainant's  device  and  descrip- 

70— Williams  Mfg.  Co.  v.  Noera,  &    Co.,    39    Fed    Rep.    209;    Singer 

158  Mass.  110,  32  N.  E.  Rep.  1037.  Mfg.    Co.   v.    Brill,     Cox.     Manual, 

71— Singer  Mfg.  Co.  v.  June  Mfg.  672. 

Co.,  163  U.  S.  169;  Singer  Mfg.  Co.  72— Singer  Mfg.  Co.  v.  Loog,  H. 

V.  Bent,  163  U.  S.  205.     See,  also,  L.  8  A.  C.  15;  53  L.  J.  Ch.  481;  48 

to    the   same    effect,   Fairbanks  v.  L.  T.  3;   31   W.  R.  325;    Cartmeil, 

Jacobus,    14     Blatchf.     337;     Fed.  306. 
Case  No.  4608.    Adee  v.  Peck  Bros. 


122  HOPKINS   ON   TRADEMARKS.  [§53 

tiou  to  represent  its  goods  as  its  goods,  and  appropriate 
its  reputation  and  trade.  The  gravamen  of  the  action  is 
the  simulation  of  complainant's  devices  and  the  decep- 
tion of  purchasers.  This  is  the  principle  of  the  best  con- 
sidered cases,  uniting  them,  notwithstanding  their  di- 
verse facts.  "^^ 

In  affirming  the  decision  of  Judge  McKenna,  however, 
the  circuit  court  of  appeals  held  that  "Syrup  of  Figs" 
was  not  a  generic  name.^"*  The  later  case  of  California 
Fig  Syrup  Co.  v.  Warden''^  put  the  plaintiff's  right  to 
relief  upon  the  proper  ground  of  unfair  competition, 
aside  from  any  technical  trademark  right  in  the  words. 

From  the  doctrine  stated  by  the  federal  supreme 
court^^  it  follows  that  the  designs,  symbols  and  marks 
used  by  a  patentee  during  the  life  of  the  patent  upon 
packages  containing  the  patented  article  may  not  be  im- 
itated by  another  upon  the  expiration  of  the  patent,  and 
such  imitation  will  be  enjoined.^'^ 

The  rule  of  unfair  competition,  that  no  man  has  a  right 
to  represent  his  goods  as  the  goods  of  another,  is  dis- 

73— California  Fig  Syrup  Co.  v.  Stearns,  67   Fed.  Rep.  1008;    s.  c, 

Improved  Fig  Syrup   Co.,  51  Fed.  73  Fed.    Rep.    812-814;     California 

Rep.    296-297,     citing     Burton     v.  Fig  Syrup  Co.  v.  Putnam,  66  Fed. 

Stratton,  12  Fed.  Rep.  696;  Baking  Rep.  750.     Since  the  foregoing  was 

Powder  Co.  v.  Fyfe,  45  Fed.  Rep.  written,  the  United  States  Supreme 

799;  Nerve  Food  Co.  v.  Baumbach,  Court  has  held  the  mark  to  be  de- 

32  Fed.  Rep.   205;    Anonyme,   etc.,  ceptive.     Clinton  E.  Worden  &  Co. 

Societe  v.  Western  Dis.  Co.,  43  Fed.  v.  California  Fig  Syrup  Co.,  187  U. 

Rep.  417.  S.  516. 

74— Improved   Fig  Sprup   Co.  v.         75— (1)    86   Fed.    Rep.    212-215; 

California  Fig  Syrup  Co.,  54  Fed.  California  Fig  Syrup  Co.  v,  Worden 

Rep.  175-178.     It  is  very  difficult  to  (2),  95  Fed.  Rep.  132. 
understand  how  the    court    could         76 — Singer  Mfg.  Co.  v.  June,  163 

conclude  that  "Syrup  of  Figs"  was  U.  S.  169;  Singer  Mfg.  Co.  v.  Bent, 

not  a  generic  name.    It  lacks  every  163  U.  S.  205. 

requisite  of  a  valid  trademark,  and         77 — Greene  v.  Woodhouse,  38  Off. 

is  undoubtedly  either  deceptive  or  Gaz.  1891;    Centaur  Co.  v.  Killen- 

merely   descriptive  of  one  of   the  berger,  87  Fed.  Rep.  725;  Same  r. 

ingredients     of    the    medicine    (a  Robinson,  91  Fed.  Rep.  889;   Same 

liquid  laxative.)       It  has  been  so  v.   Neathery,   91    Fed.    Rep.     891; 

held  in  California  Fig  Syrup  Co.  v.  Same  v.  Hughes  Bros.  Mfg.  Co.,  91 


§  53]  WHAT    CONSTITUTES   A    VALID    TRADf:MARK.  123 

tinctly  applied  in  several  of  the  more  recent  English  de- 
cisions to  tenns  strictly  generic  and  of  which  technical 
trademark  rights  could  not  be  predicated.  Thus  where 
the  manufacturers  of  ''Reddaway  Camel  Hair  Belting" 
sought  to  enjoin  a  rival  manufacturer  from  styling  his 
product  ''The  Bentham  Camel  Hair  Belting,"  Lord  Jus- 
tice Lindley,  in  the  court  of  appeal,  said:  ''The  catch- 
words are  'Camel  Hair  Belting.'  *  *  *  ti^^  use  of 
the  catch-words  alone  may  establish  the  plaintiff's  right 
to  relief.  The  plaintiffs  have  no  right  to  the  exclusive 
use  of  these  words;  but  they  have  a  right  to  restrain  any 
one  from  so  using  them  as  to  pass  his  goods  off  as  the 
goods  of  the  plaintiffs,  "^^  So  an  injunction  was  granted. 
Very  similar  to  this  was  the  case  in  which  the  plaintiffs 
manufactured  a  soap  under  the  name  "The  Self- Wash- 
er." The  defendants  thereafter  applied  the  term  "Self- 
washing"  to  their  soaps.  It  was  held  that  the  terms  ' '  Self- 
washer"  or  "Self- washing"  were  used  in  a  descriptive 
sense  and  therefore  neither  could  be  appropriated  as  a 
valid  technical  trademark;  but  because  of  the  paper  used 
by  the  defendants  in  wrapping  their  soap,  being  an  imi- 
tation parchment  paper,  and  the  type  used  by  them, 
which  closely  resembled  that  used  by  the  plaintiffs,  the 
defendants  were  enjoined.  Lord  Justice  Cotton,  in  the 
court  of  appeal,  observing:  "There  may  be  no  monopoly 
at  all  in  the  individual  things  separated,  but  if  the  whole 
are  so  joined  together  as  to  attempt  to  pass  off,  and  to 
have  the  effect  of  passing  off,  the  defendants'  soap  as  the 
plaintiffs',  then,  although  the  plaintiffs  have  no  monop- 
oly either  in  'Self-washing'  or  'Self-washer'  or  in  the 
parchment  paper  or  in  the  spaced  printing,  yet  if  those 

Fed.  Rep.  901.     In  this  connection  with  the  prefix  "original."     Cocks 

it   is   probable    that    the   name    by  v.  Chandlers,  L.  R.  11  Eq.  447. 
which     the    patented     article    was        78— Reddaway        v.        Bentham 

known  during  the  life  of  the  pat-  Hemp    Spinning   Co.,    9    R.     P.    C. 

ent  (if  otherwise  valid  as  a  trade-  503;   L.  R.    (1892)   2  Q.  B.  639;   67 

mark)    may   be   continued   in  use,  L.  T.  301;  Cartmell,  282. 


124  HOPKINS   ON   TRADEMARKS.  [§53 

things  in  wliicli  they  have  no  sole  right  are  so  combined 
by  the  defendants  as  to  pass  off  the  defendants'  goods  as 
the  plaintiffs',  then  the  defendants  have  brought  them- 
selves within  the  old  common-law  doctrine  in  respect  of 
which  equity  will  give  to  the  aggrieved  party  an  injunc- 
tion in  order  to  restrain  the  defendant  from  passing  off 
his  goods  as  those  of  the  plaintiff."'^'' 

These  cases,  with  those  cited  in  the  foot-note,  will  suf- 
ficiently demonstrate  the  fact  that  the  rule  under  consid- 
eration is  not  only  important  but  well  established,  and 
that  the  user  of  a  strictly  generic  term  will  be  protected 
in  the  business  he  has  established  under  that  term,  as 
against  a  dishonest  use  of  it  by  a  competitor.^^ 

The  doctrine  of  unfair  competition,  by  which  the  use 
of  descriptive  words  has  sometimes  been  restrained,  has 
engrafted  upon  it  this  important  qualification — that  in 
no  case  will  the  use  of  a  merely  desciiptive  word  be  re- 
strained as  deceptive,  unless  in  circumstances  which  show 
fraud  on  the  part  of  the  user.^^  The  English  leading 
cases  upon  this  proposition  are  the  ''Camel  Hair  Belt- 
ing" case,^-  to  which  we  have  already  referred,  and  the 
"Cellular  Clothing"  case.^^  In  the  former  case  the  de- 
fendant said  expressly  that  by  usijig  the  term  "Camel 

79— Lever   v.   Goodwin,   4    R.    P.  Co.,  58  Fed.  Rep.  884;  Morgan  En- 

C.  492-506;    36  Ch.  D.  1;    57  L.  T.  velope  Co.  v.  Walton,  86  Fed.  Rep. 

583;    36  W.  R.  177;   Cartmell,  209.  605;   VanHorn  v.  Coogan,  52  N.  J. 

80— Lever   v.   Bedingfield,    80   L.  Eq.    380;     28    Atl.    Rep.    788;    An- 

T.  N.  S.  100;  Barlow  v.  Johnson,  7  heuser-Busch     Brewing     Ass'n     v. 

R.   P.   C.   395;    Cartmell,  73;    Cur-  Fred  Miller  Brewing  Co.,  87  Fed. 

tis  V.  Pape,  5  R.  P.  C.  146;   Cart-  Rep.  864;   Cellular  Clothing  Co.  v. 

mell,  105;    Jay  v.  Ladler,  6  R.  P.  Maxton,  L.   R.    (1899)    A.   C.  326; 

C.   136;    40   Ch.    D.    649;    60   L.  T.  Goodman  v.  Bohls,  3  Tex.  Civ.  App. 

27;    37  W.  R.  505;    Cartmell,  184;  183;  22  S.  W.  Rep.  11'. 

Powell    V.    Birmingham     Vinegar  81 — Cellular     Clothing     Co.     v. 

Brewery  Co.,  L.  R.  (1894)  3  Ch.  D.  Maxton,   L.    R.    (1899)    A.    C.   326- 

449-462;   Reddaway  v.  Banham,  L.  341. 

R.  (1896)  A.  C.  199;  Brown  Chem-  82— Reddaway  v.  Banham,  L.  R. 

ical    Co.    V.    Meyer,    31    Fed.    Rep.  (1896)  A.  C.  199. 

453;  Jennings  v.  Johnson,  37  Fed.  83— Cellular     Clothing     Co.     v. 

Rep.  364;   Meyer  v.  Bull  Medicine  Maxton,  L.  R.   (1899)   A.  C.  326. 


§  53]  WHAT    CONSTITUTES    A   VALID   TRADEMARK,  125 

Hair  Belting"  he  would  be  enabled  to  seJl  his  goods  as 
those  of  the  plaintiff.  Each  case  involved  the  use  of  a 
descriptive  word.  In  the  belting  case,  however,  the  word 
had  acquired  an  additional  meaning.  The  mere  use  of 
the  words  ''Camel's  Hair"  had  come  to  ])e  understood  in 
the  trade  as  indicating  belting  of  the  plaintiff's  manu- 
facture. It  was  proved  in  addition  to  this  that  the  de- 
fendant's acts  were  done  in  consummation  of  a  fraudu- 
lent design  to  sell  his  goods  as  those  of  the  plaintiff.  For 
these  reasons  the  use  of  the  word  Ijy  the  defendant  was 
restrained.®*  The  Cellular  Clothing  case  differed  from 
this  on  the  facts.  As  in  the  belting  case,  the  words  ''Cel- 
lular Clothijig"  were  originally  purely  descriptive,  being 
applied  to  a  cloth  of  cellular  stnicture.  It  was  not  shown 
that  the  term  had  so  acquired  a  technical  and  secondary 
meaning,  arising  from  its  natural  meaning,  that  it  could 
be  excluded  from  the  use  of  eveiy  one  else,**-^  and  it  was 
not  shown  that  the  defendant  had  intended  to  defraud 
the  plaintiff,  or  that  any  one  had  bought  of  the  defendant 
in  the  belief  that  he  was  getting  plaintiff's  goods.®''  The 
Cellular  Clothing  case  demonstrates  very  clearly  that  one 
who  takes  upon  himself  to  prove  that  words  which  are 
merely  descriptive  or  expressive  of  the  quality  of  the 
goods  have  acquired  a  secondaiy  meaning  and  indicate 
that  the  goods  are  of  his  manufacture  has  assumed  a 
burden  which,  while  it  is  not  impossible,  is,  in  the  lan- 
guage of  Lord  Davey,  ' '  at  the  same  time  extremely  diffi- 
cult to  discharge— a  much  greater  burden  than  that  of 
a  man  who  undertakes  to  prove  the  same  thing  of  a  word, 
not  significant  and  not  descriptive,  but  what  has  been 
compendiously  called  a  'fancy'  word."®^ 

84— See  opinion  of    Lord    Hals-  Clothing   Co.    v.     Maxton,    L.    R. 

bury    in   Cellular   Clothing   Co.   v.  (1899)    A.   C.   326-337. 

Maxton,   L.   R.    (1899)    A.   C.   326-  86— Lord     Watson     in     Cellular 

335,  and  Reddaway  v.  Banham,  L.  Clothing    Co.    v.     Maxton,     L.     R. 

R.   (1896)   A.  C.  199,  204-205.  (1899)    326-337'. 

85 — Lord    Halsbury    in   Cellular  87 — Lord       Davey     in     Cellular 


126  HOPKINS   ON   TRADEMARKS.  [§  54 

§  54.  The  test  of  "origin  or  ownership."— One  of  the 
primary  methods— if  indeed  it  is  not  the  fmidamental 
test— in  determining  the  validity  of  a  trademark  has 
been  broadly  annomiced  by  the  supreme  court  of  the 
United  States  in  these  words:  "The  office  of  a  trade- 
mai'k  is  to  point  out  distinctively  the  origin  or  ownership 
of  the  article  to  which  it  is  affixed,  or,  in  other  words,  to 
give  notice  who  was  the  producer."^**  And  it  has  re- 
cently been  said:  "That  such  mark  or  symbol  (i.  e., 
any  mark  or  symbol  claimed  as  trademark)  must  be  de- 
signed, as  its  primary  object  and  pui-pose,  to  distinguish 
each  of  the  articles  to  which  it  is  affixed  from  like  arti- 
cles produced  by  others,  seems  to  be  the  clear  consensus 
of  all  the  cases  which  are  authoritative."^^ 

Substantially  this  form  of  expression  has  been  em- 
ployed by  the  American  courts  from  their  earliest  trade- 
mark decisions.  Our  profoundly  learned  chancellor,  Wal- 
worth, stated  the  rule  as  well  as  any  court  that  has  fol- 
lowed him,  when  he  said:  "The  court  proceeds  upon 
the  ground  that  the  complainant  has  a  valuable  interest 
in  the  good-will  of  his  trade  or  business.  And  that  hav- 
ing appropriated  to  himself  a  particular  label,  or  sign  or 
trademark,  indicating  to  those  who  wish  to  give  him  their 
patronage  that  the  article  is  manufactured  or  sold  by 
him,  or  by  his  authority,  or  that  he  carries  on  business 
at  a  particular  place,  he  is  entitled  to  protection  against 
a  defendant  who  attempts  to  pirate  upon  the  good-will 
of  the  complainant 's  friends  or  customers,  or  the  patrons 
of  his  trade  or  business,  by  sailing  under  his  flag  without 


Clothing   Co.     v.     Maxton,     L.    R  Co.,    91   Fed.    Rep.    376-378,    citing 

(1899)  326-343.  Delaware  &  Hudson  Canal  Co.  v. 

88— Delaware    &  Hudson    Canal  Clark,   13    Wall.     311;     Amoskeag 

Co.  V.  Clark,  13  Wall.  311;   5  Am.  Mfg.  Co.  v.  Trainer,  101  U.  S.  54; 

L.   T.   135;    1  Off.  Gaz,   279;    Seb.  Lawrence   Mfg.   Co.   v.    Tennessee 

327.  Mfg.  Co.,  138  U.  S.  537;  Columbia 

89— Lurton.  J.,  in  Deerlng  Har-  Mill  Co.  v.  Alcorn,  150  U.  S.  460. 
vester  Co.  v.  Whitman-Barnes  Mfg. 


§  54]  WHAT    CONSTITUTES   A   VzVLID    TR.VDEMARK,  127 

his  authority  or  consent."""^     In  the  light  of  tliis  state- 
ment, the  words  of  the  supreme  court  assume  a  broader 
meaning.    In  1849,  the  year  following  that  in  which  the 
opinion  last  quoted  from  was  rendered,  it  was  said  in  an 
opinion  of  the  superior  court  of  New  York  City,  that** the 
owner  of  a  trademark  has  no  right  to  an  exclusive  use  of 
any  words,  letters,  figures  or  symbols  wliich  have  no  re- 
lation to  the  origin  or  ownership  of  the  goods. '"^^     And 
the  same  court,  by  the  same  judge  (Duer),  repeated  the 
statement  in  very  nearly  the  same  words  in  1857,  saying 
that  a  name  could  be  rightfully  used  and  protected  as  a 
trademark  only  * '  where  the  name  is  used  merely  as  indi- 
cating the  true  origin  or  ownership  of  the  article  offered 
for  sale,  never  where  it  is  used  to  designate  the  article 
itself  and  has  become,  by  adoption  and  use,  its  proper 
appellation.  "^2    ^^^j  jjj  jggg  ^j^g  supreme  court  of  Cali- 
fornia stated  the  rule  to  be  that  trademarks  will  be  pro- 
tected ' '  only  so  far  as  such  marks  serve  to  designate  the 
true  origin  or  ownership  of  the  goods  to  which  they  are 
attached. '"^3     So  that  when  the  doctrine  as  first  stated  by 
the  federal  supreme  court  was  announced,  it  had  become 
well  settled  in  our  jurisprudence  that  a  trademark  must 
indicate  origin  or  ownership,  and  the  only  difficulty  pre- 
sented by  the  maxim  to  bench  and  bar  is  that  of  its  appli- 
cation to  each  new  state  of  facts  as  it  arises.     It  must  be 
noted,  however,  that  * '  it  is,  of  course,  no  fatal  objection 
to  the  validity  of  a  trademark  that  it  does  not  include 
the  name  of  the  manufacturer  or  producer.     The  sign, 
symbol  or  mark  may  be  purely  fanciful,  and  convey  no 
information  as  to  the  name  of  the  producer.    But  the 


90— Partridge  v.  Menck,  2  Sand.  Pr.   144;    13   How.    Pr.     385;     Cox. 

Ch.  622;    2  Barb.  Ch.  101;    1  How.  180;    Seb.   144. 
App.  Cas.  558;  Cox.  72;  Seb.  91.  93— Falkinburg  v.  Lucy,  35  Cal. 

91 — Amoskeag  Mfg.  Co.  v.  Spear.  52;    and    Eggers  v.  Hink.    63    Cal. 

2   Sand.  S.  C.   599;    Cox,  87;    Seb.  445.     See   also    Osgood    v.    Allen 

100.  (Maine),  1  Holmes,  185;  6  Am.  L. 

92— Fetrldge  v.  Wells,    4    Abb.  T.  20;   3  Off.  Gaz.  124;   Seb.  410. 


128  HOPKINS   ON   TRADEMARKS.  [§  55 

essential  thing  is  that  it  shall  be  designed  and  used  to 
indicate  the  origin  of  the  article  and  that  all  articles  hav- 
ing the  same  mark  come  from  a  common  source.'"'* 

It  is  self-evident  that  while  a  mark  may  be  indicative 
of  origin  and  ownership,  it  may,  because  generic  or  de- 
ceptive, fall  short  of  being  a  valid  trademark.  But  every 
valid  trademark  must  be  indicative  of  origin  or  owner- 
ship in  the  sense  in  which  those  words  are  used  in  the  de- 
cisions. 

§  55.  Geographical  names.— The  rule  that  geograph- 
ical names  cannot  be  exclusively  appropriated  for  the 
purposes  of  trademark  has  been  recognized  from  the 
infancy  of  trademark  law.  It  was  said  by  the  United 
States  supreme  court  that  "No  one  can  apply  the  name 
of  a  district  of  countrj^  to  a  well-known  article  of  com- 
merce and  obtain  thereby  such  an  exclusive  right  to  the 
application  as  to  prevent  others  inhabiting  the  district, 
or  dealing  in  similar  articles  coming  from  the  district, 
from  truthfullj^  using  the  same  designation.  It  is  only 
when  the  adoption  or  imitation  of  what  is  claimed  to  be 
a  trademark  amounts  to  a  false  representation,  express 
or  implied,  designed  or  incidental,  that  there  is  any  title 
to  relief  against  it."^ 

94— Lurton,  J.,  in  Deering  Har-  Am.  L.  T.  20;  3  Off.  Gaz.  124;  Seb. 

vester   Co.  v.   Whitman   &   Barnes  410;  Glendon  Iron  Co.  v.  Uhler,  75 

Mfg.  Co.,  91  Fed.  Rep.  376-380.  To  Pa.  St.  467;    15  Am.  Rep.  599;    13 

the  same  effect  see  Dennison  Mfg.  Am.  L.  Reg.  N.  S.  543;   6  Off.  Gaz. 

Co.  V.   Thomas   Mfg.   Co.,   94   Fed.  154;  Seb.  439;  Bulloch,  Lade  &  Co. 

Rep.  651-656.  v.  Gray,  19  Journ.  of  Jurisp.  218; 

1— Delaware  &  Hudson  Canal  Co.  Seb.    452;    Wolfe   v.     Goulard,     18 

V.  Clark,  13  Wall.  311;  5  Am.  L.  T.  How  Pr.   64;    Clinton    Met.    Paint 

135;    1    Off.    Gaz.    279;    Seb.     327;  Co.  v.  N.  Y.  Met.  Paint  Co.,  50  N. 

and     to     the      same    effect,     see  Y.   Supp.   437;    Gabriel  v.   Sicilian 

Columbia  Mill   Co.  v.  Alcorn,  150  Asphalt  Co.,  52  N.  Y.   Supp.  722; 

U.  S.  460;  Candee,  Swan  &  Co.  v.  Morgan  Envelope  Co,  v.  Walton,  86 

Deere   &   Co.,   54    111.   439;    5   Am.  Fed.  Rep.  605;    Wm.  Rogers  Mfg. 

Rep.  125;  4  Am.  L.  T.  266;  10  Am.  Co.   v.    Rogers   &   S.    Mfg.    Co.,    11 

L.   Reg.   N.   S.    694;    Seb.   339;    Re  Fed.  Rep.  495;  Burgess  v.  Burgess, 

Tolle,    2    Off.   Gaz.    415;    Seb.    405;  17   Eng.    L.   &   Eq.    257;    Brooklyn 

Osgood  V.  Allen,  1  Holmes,  185;   6  White  Lead  Co.  v.  Masury,  25  Barb. 


§56]  WHAT  co:<.STrruTES  A  v.vlid  tr.vdemark.  129 

§  56.  As  employed  by  sole  owner  of  a  natural  product 
and  its  place  of  production.— There  can  be  uo  doubt  that, 
where  the  owuer  of  a  geographical  site  productive  of  a 
salable  article  is  the  sole  owner,  he  may  have  an  ex- 
clusive right  in  the  name  of  his  site.  This  i*ule  has  been 
followed  in  several  cases  where  the  proprietor  of  the 
commodity  was  the  owner  of  the  place  of  its  produc- 
tion, and  the  name  of  that  place  was  a  prominent  and 
controlling  part  of  the  trademark.  Lord  Cranworth  so 
held  in  the  case  of  a  wine-grower  who  used  the  name  of 
his  vineyard  as  a  trademark  for  his  wines.-  And  the  use 
of  the  words  "Congress  Water"  as  designating  the  prod- 
uct of  ''Congress  Spring"  was  sustained  on  the  suit  of 
the  sole  owner  of  the  springs.^ 

§  57.  When  geogTaphical  names  will  be  protected  as 
trademarks.— In  many  cases  the  use  of  geographical 
words  has  been  protected  on  the  ground  of  unfair  compe- 
tition. It  was  so  held  where  the  complainants  applied 
the  word  ''Durham,"  the  name  of  a  town  in  Xorth  Caro- 
lina, to  tobacco  manufactured  by  them  at  that  locality. 

416;   Lea  v.  Wolff,  13  Abb.  Pr.  N.  though  the  -word    "Raleigh"    was 

S.  389;  15  Id.  1;  46  How.  Pr.  157;  that  of   an    historical    personage, 

1  Am.  L.  T.  N.  S.  400;   Seb.  407;  registration   was   refused    because 

Carmichel  v.  Latimer,  11  R.  L  395;  it  was  also  a  geographical  name. 

Eggers  V.  Hink,  63  Cal.  445;   Dun-  Ex  parte  Oliver,  18  Off.  Gaz.  923; 

bar  V.  Glenn,  42  Wis.  118;  Anheu-  Price  &  Steuart,  59. 

ser-Busch  Brewing  Association    v.  2 — Seixo  v.  Provezende,  L.  R.  1 

Pisa,  23  Blatchf.  245;  Lea  v.  Deak-  Ch.  192;  12  Jur.  N.  S.  215;  14  L.  T. 

in,      Fed.      Case      No.      8154,      11  N.  S.  314;   14  W.  R.  357;  Seb.  256. 

Biss.     23;      Pratt's     Appeal,     117  3 — Congress    &    Empire     Spring 

Pa.   St.  401;    Smith  v.  Walker,  37  Co.  v.  High  Rock  Congress  Spring 

Mich.  456;   Smith  v.  Imus,  32  Alb.  Co.,  4  Am.  L.  T.  168;   10  Abb.  Pr. 

L.   J.  455;    Burton  v.   Stratton,  12  N.  S.  348;  6  Am.  Rep.  82;  57  Barb. 

Fed.  Rep.  696;  Evans  v.  Van  Laer,  526;  45  N.  Y.  291;  Cox,  599;  to  the 

32  Fed.  Rep.  153;  Gabriel  v.  Sicil-  same    effect,    see    La    Republique 

lian  Asphalt   Co.    (2),    56    N.    Y.  Francaise  v.  Schultz,  57  Fed.  Rep. 

Supp.  30;  Gebbie  v.  Stitt,  31  N.  Y.  37;  City  of  Carlsbad  v.  Kutnow,  68 

Supp.  102;   Weyman  v.  Soderberg,  Fed.  Rep.  794;   s.  c,  71  Fed.  Rep. 

108  Fed.  Rep.  63;   Telephone  Mfg.  167;  City  of  Carlsbad  v.  Schultz,  78 

Co.   V.   Sumter  Mfg.   Co.,  63   S.   C.  Fed.  Rep.  469;  Northcutt  v.  Turney, 

313,    41    S.    E.    Rep.    322.         Even  101  Ky.  314;  41  S.  W.  Rep.  21. 
9 


130  HOPKINS   ON   TR.VDEM^VRKS.  [§  57 

The  defendant,  whose  business  was  conducted  at  Eich- 
mond,  was  enjoined  from  applying  the  word  to  tobacco 
produced  by  him.^  And  the  usual  rule  by  which  geo- 
graphical names  have  been  protected  against  infringers 
by  injunction  was  thus  tersely  stated  by  the  patent  office: 
*  *  Undoubtedly  courts  of  equity  have  granted  injunctions 
to  restrain  the  fraudulent  use  of  words  of  this  character; 
but  the  grounds  of  such  decisions  have  been  invariably, 
I  think,  the  fraud  of  the  defendants,  and  not  any  exclu- 
sive right  of  the  plaintiffs. '  '^  Probably  a  more  accurate 
statement,  however,  is  that  of  the  United  States  circuit 
court  of  appeals  in  the  very  well  considered  opinion  in 
Pillshury-Washhurn  Co.  v.  Eagle :^  ''The  distinction, 
both  in  the  English  and  American  cases,  is  between  those 
where  a  geographical  name  has  been  adopted  and 
<;laimed  as  a  trademark  proper,  and  those  where  it  has 
been  adopted  first  as  merely  indicating  the  place  of 
manufacture,  and  afterwards,  in  the  course  of  time,  has 
become  a  well-known  sign  and  synonym  for  superior  ex- 
cellence. In  the  latter  class  of  cases,  persons  residing  at 
other  places  will  not  be  permitted  to  use  the  geograph- 
ical name  so  adopted  as  a  brand  or  label  for  similar 
goods  for  the  mere  purpose,  by  fraud  and  false  represen- 

4— Blackwell  &  Co.  v.  Dibrell  &  that  the  plaintiff,  merely  on  the 
Co.,  3  Hughes,  151,  Fed.  Case  No.  strength  of  having  been  first  in 
1,475;  Price  &  Steuart,  10.  the  field  may  put  later  comers  to 
'  ^—Ex  parte  Farnum  &  Co..  18  the  trouble  of  taking  such  reason- 
Off.  Gaz.  412;  Price  &  Steuart,  68.  able  precautions  as  are  commer- 
6—86  Fed.  Rep.  608,  30  C.  C.  A.  cially  practicable  to  prevent  their 
386;  overruling  s.  c,  82  Fed.  Rep.  lawful  names"  and  advertisements 
816.  The  false  use  of  a  geographi-  from  deceitfully  diverting  the 
cal  name  will  not  be  tolerated  plaintiff's  custom."  This  was  said 
when  it  is  so  used  as  to  promote  of  the  word  "Waltham"  as  applied 
unfair  competition  and  to  induce  to  watches  by  Holmes,  J.,  in  Amer- 
the  sale  of  spurious  goods.  Collins-  ican  Waltham  Watch  Co.  v.  United 
platt  V.  Finlayson,  88  Fed.  Rep.  693.  States  Watch  Co.,  173  Mass.  85; 
"Whatever  might  have  been  the  53  N.  E.  Rep.  141;  followed  in 
doubts  some  years  ago,  we  think  American  Waltham  Watch  Co.  v. 
that  now  it  is  pretty  well  settled  Sandman,   96   Fed   Rep.   330. 


§  58  J  WHAT  CONSTITUTES  A  VALID  TRADEMARK.  131 

tation,  of  appropriating  the  good-will  and  business 
which  long  continued  industry  and  skill  ard  a  generous 
use  of  capital  has  rightfully  built  up.  It  will  be  of  no 
avail  in  such  cases,  where  the  facts  are  admitted  or 
proven,  to  allege  a  want  of  power  in  a  court  of  equity  to 
find  a  remedy."  In  other  words,  geogra})hical  names 
can  never  be  appropriated  as  trademark;  but  with  the  de- 
velopment of  the  law  of  unfair  competition  has  come  the 
incidental  protection  of  geographical  names  applied  to 
merchandise,  not  as  technical  trademark,  but  as  an  indi- 
cation to  the  public  of  the  true  place  of  its  manufacture. 
And  no  manufacturer  can  defend,  any  more  than  he 
could  maintain,  a  suit  in  equity,  where  he  is  falsely  repre- 
senting the  place  where  his  manufacture  is  conducted. 

§  58.  Geographical  names— The  underlying  principle. 
—Judge  Lacombe  has  recently  given  this  concise  ex- 
pression of  the  rule  applied  by  courts  of  equity  to  geo- 
graphical names  falsely  used  in  unfair  competition: 
*' Whatever  may  be  the  decisions  in  the  state  courts,  it 
is  abundantly  settled  by  authority  in  the  federal  courts 
that  they  will  not  tolerate  a  false  use  of  a  geographical 
name  when  it  is  so  used  as  to  promote  unfair  competition 
and  to  induce  the  sale  of  spurious  goods.""  In  a  later 
case,  the  rule  has  been  illustrated  and  applied  as  fol- 
lows: ''Tlie  respondents  concede  that  they  put  up  in 
cans  pears  grown  in  Maryland  and  adjoining  states, 
and  keep  the  cans  without  labels  until  they  are  sold, 
and  then,  at  the  desire  of  their  customers,  they  label 
them  as  California  pears,  canned  by  some  pretended 
packer  at  some  place  in  California.  This  is  a  clear  case 
of  fraudulent  competition  by  the  use  of  a  geographical 
name  which  the  complainants  are  entitled  to  use,  but 
the  respondents  are  not.  It  is  true  that  no  one  single 
packer  can  acquire  an  exclusive  right  to  use  as  a  pri- 
vate trademark,  'California  Pears,'  or  'California,'  as 

7 — Collinsplatt  v.   Finlayson,   88  Fed.  Rep.  693. 


132  HOPKINS   ON   TR.U)EMARKS.  [§  58 

a  label  on  canned  pears;  but  all  tlie  persons  who  put  up 
California  grown  pears  in  California  have  a  right  to 
use  it;  and  it  has  acquired,  the  bill  alleges,  an  especial 
trade  significance  of  value.  With  regard  to  articles  of 
food,  and  particularly  with  regard  to  fruits,  the  place 
where  they  are  grown  creates  often  an  essential  distinc- 
tion as  to  quality  and  flavor;  and  this  distinction,  when 
it  has  become  known  in  trade  by  the  geographical  name 
of  the  iDlace  where  grown,  the  growers  of  the  fruit  are 
entitled  to  the  benefit  of,  and  the  consumers  should  not 
be  deceived.  The  present  is  such  a  case,  and  presents, 
I  think,  indisputable  ground  for  application  of  the  equi- 
table jurisdiction  which  prevents  unfair  and  fraudulent 
competition  by  simulated  trade  designations."^ 

The  suprem^e  court  of  the  United  States  has  clearly  ex- 
cluded geographical  names  from  use  as  technical  trade- 
marks. 

It  was  said  by  Mr.  Justice  Jackson:  "The  general 
principles  of  law  applicable  to  trademarks,  and  the  con- 
ditions under  which  a  party  may  establish  an  exclusive 
right  to  the  use  of  a  name  or  symbol,  are  well  settled  by 
the  decisions  of  this  court,  .  .  .  which  .  .  .  estab- 
lish the  following  general  propositions:  .  .  .  (3) 
That  the  exclusive  right  to  the  use  of  the  mark  or  device 
claimed  as  a  trademark  is  founded  on  prioritj^  of  appro- 
priation; that  is  to  say,  the  claimant  of  the  trademark 
must  have  been  the  first  to  use  or  employ  the  same  on  like 
articles  of  production.     (4)     Such    trademarks    cannot 

8 — Morrow,  J.  in  California  Fruit  in  the  Stone  Ales  Case,  in  the 
Canners'  Ass'n  v.  Myer,  104  Fed.  House  of  Lords,  which  suggest 
Rep.  82,  citing  Pillsbury- Washburn  that  a  practical  monopoly  might 
Co.  V.  Eagle,  30  C.  C.  A.  386,  86  Fed.  be  acquired  of  the  use  of  the  name 
Rep.  608-618.  The  leading  English  of  a  place  where  goods  are  manu- 
case  is  the  Stone  Ales  Case,  Thomp-  factured;  but  they  must,  it  is  sub- 
son  V.  Montgomery,  (1891)  App.  mitted,  be  read  by  reference  to  the 
Cas.  217;  8  R.  P.  C.  365.  Of  this  de-  facts  of  the  case,  which  was  one 
cision  a  very  learned  English  law  of  deliberate  fraud."  Kerly  on 
writer  has  said:     "There  are  dicta  Trademarks  (London,  1894),  p.  44. 


§  58]  WHAT   CONSTITUTES  A   VALID   TRADEMARK.  133 

consist  of  words  in  common  use  as  designating  locality, 
section,  or  region  of  countr}'."'^ 

The  reasons  for  this  rule  have  been  more  fully  ex- 
pressed by  Mr.  Justice  Strong,  in  these  words:  '*No  one 
can  claim  protection  for  the  exclusive  use  of  a  trademark 
or  tradename,  which  would  practically  give  liim  a  mo- 
nopoly in  the  sale  of  any  goods  other  than  those  produced 
or  made  by  himself.  If  he  could,  the  public  would  be  in- 
jured rather  than  protected;  for  competition  would  be 
destroyed.  Nor  can  a  generic  name,  or  a  name  merely 
descriptive  of  an  article  of  trade,  of  its  qualities,  in- 
gredients, or  characteristics,  be  employed  as  a  trade- 
mark, and  the  exclusive  use  of  it  be  entitled  to  a  legal 
protection.  .  .  .  He  has  no  right  to  apiwopriate  a 
sign,  or  a  symbol,  which,  from  the  nature  of  the  fact  it  is 
used  to  signify,  others  may  employ  with  equal  truth,  and 
therefore  have  an  equal  right  to  employ  for  the  same  pur- 
pose. And  it  is  obvious  that  the  same  reasons  which 
forbid  the  exclusive  appropriation  of  generic  names,  or 
of  those  merely  descriptive  of  the  article  manufactured, 
and  which  can  be  employed  with  truth  by  other  manu- 
facturers, apply  with  equal  force  to  the  appropriation  of 
geographical  names  designating  districts  of  country. 
Tbeir  nature  is  such  that  they  cannot  point  to  the  origin 
(l3ersonal  origin)  of  the  articles  of  trade  to  which  they 
may  be  applied.  ...  It  must  be  considered  as  sound 
doctrine  that  no  one  can  apply  the  name  of  a  district  of 
country  to  a  well-known  article  of  commerce,  and  obtain 
thereby  such  an  exclusive  right  to  the  application  as  to 
prevent  others  inhabiting  the  district,  or  dealing  in 
similar  articles  coming  from  the  district,  from  truthfully 
using  the  same  designation.  "^'^ 

Is  it  not  a  reasonable  conclusion  from  these  and  the 
kindred  cases  which  we  have  heretofore  examined,  that 
there  can  be  no  technical  trademark  in  a  geographical 

9— Columbia  Mill  Co.  v.  Alcorn,  10 — Delaware  &  Hudson  Canal 
150  U.  S.  460.  Co.   V.   Clark,    13   Wall.   323. 


134  HOPKINS   ON   TRADEMARKS.  [§  58 

name?  To  the  author's  mind  that  conclusion  is  inevi- 
table, and  there  is  but  one  class  of  geographical  names 
which  are  to  be  excepted  from  the  operation  of  the  rule, 
namely,  those  applied  to  a  natural  product  and  its  sole 
place  of  production.  The  name  so  used  may  very  prop- 
erly be  a  trademark,  indicative  of  the  origin  and  own- 
ership of  the  natural  product,  and  at  the  same  time  indi- 
cating the  locality  of  its  production.  Here  the  name 
imdoubtedly  is  a  trademark  if  there  is  but  one  owner  of 
the  entire  locality,  and  the  courts  have  uniformly  so 
held.^^  The  same  scientific  objection  to  geographical 
names  as  trademark  obtains  as  in  the  case  of  proper 
names.  They  are  generic,  in  that  every  manufacturer 
who  sees  fit  to  locatefin  that  city  or  vicinagejand  inaugu- 
rate a  competing  business  has  an  equal  right  with  all 
those  who  have  preceded  him  in  the  locality,  and  all 
those  who  may  thereafter  so  locate,  in  using  the  name  of 
that  locality  in  advertising  his  wares  and  in  preparing 
them  for  commerce.^  ^ 

Being  generic  they  cannot  be  used  as  trademarks,  with 
the  one  exception  we  have  noted,  that  of  the  title  to  the 
entire  locality  being  vested  in  one  owner.  In  that  case 
no  one  else  can  locate  there  and  institute  competition; 
the  name  of  the  locality  is  not  generic,  and  that  fact  ex- 
empts it  from  the  operation  of  the  rule. 

In  the  course  of  a  well-considered  opinion  Judge  Sho- 
walter  has  held  the  name  "Elgin"  as  applied  to  watch- 
movements  to  be  a  strictly  technical  trademark,  even 
though  the  name  is  that  of  the  town  where  the  factory  is 
situated,  because,  in  the  words  of  the  court:  "This  mark 
has  this  significance  (designating  complainants'  manu- 

11— City  of  Carlsbad  v.  Schultz,  12— Blackwell  v.  Dibrell,  Fed. 
78  Fed.  Rep.  469;  City  of  Carls-  Case  No.  1475,  3  Hughes,  160;  New- 
bad  V.  Kutnow,  71  Fed.  Rep.  167,  man  v.  Alvord,  49  Barb.  588;  35 
affirming  67  Fed.  Rep.  794;  Hill  \.  How.  Pr.  108;  Cox,  404;  Delaware 
Lockwood,  32  Fed.  Rep.  389;  &  Hudson  Canal  Co.  v.  Clark,  13 
Northcutt  V.  Turney,  101  Ky.  314,  Wall.  311;  New  York  Cement  Co.  v. 
41  S.  W.  Rep.  21.  Coplay  Cement  Co.,  45  Fed.  Rep.  212, 


§59]  WHAT   CONSTITUTES  A   VALID  TRADEMARK. 


135 


facture)  where  the  town  of  Elgin  is  entirely  unknown." 
But  this  is  purely  a  dictum,  and  presented  in  a  case  of 
fraudulent  competition,  where  the  defendants  had  re- 
moved their  factory  from  Chicago  to  Elgin  ^'with  the 
purpose  ...  of  giving  some  color  of  right  to  a  de- 
signed trespass  on  complainant's  good-will. "^"^ 

§  59.  A  false  geographical  name  vitiates  trademark. 
—To  all  that  has  been  said  in  the  last  preceding  section 
must  be  noted  one  broad  qualification.  He  who  seeks  to 
uphold  a  trademark  in  a  court  of  equity  must  do  so  with 
clean  hands,  so  that  a  trademark  otherwise  good  will  be 
vitiated  and  the  right  to  it  destro3'ed  by  the  use  of  a  false 
geographical  name  in  connection  with  it.^^  And  this  is 
true,  as  expressed  by  Judge  Showalter,  even  though  '*No 
actual  or  substantial  wrong  may  have  resulted  to  any  one 
from  this  misrepresentation."^^ 

This  rule,  however,  has  its  practical  limitations.  Like 
other  forms  of  misrepresentation,  it  may  be  that  the  use 
of  a  geographical  name,  by  one  not  residing  or  manufac- 
turing within  the  locality  named,  amounts  to  a  mere  col- 
lateral misrepresentation.  Thus,  the  fact  that  one  of  the 
mills  of  manufacturers  who  are  joined  in  an  action  to 
restrain  the  fraudulent  use  of  the  name  of  the  city  in 
which  they  are  situated,  is  situated  outside  the  limits  of 
the  city,  is  not  a  bar  to  equitable  relief,  when  the  mill 
is  practically  a  portion  of  a  plant  the  remainder  of  which 
is  within  the  city.^^ 

There  is  a  class  of  words  usually  treated  as  "geograph- 

13— Elgin  Nat.  Watch   Co.  v.  Ill-  Wood,   108  U.   S.   218;    and    cases 

Inois  Watch  Co.,   (1)   89  Fed.  Rep.  cited  ante.  §  34. 

487.     Reversed     on     jurisdictional  15 — Royal  Baking  Powder  Co.  v. 

grounds,  Illinois  Watch  Co.  v.  El-  Raymond,  70  Fed.  Rep.  376-382.  To 

gin  Nat.  Watch  Co.,  94  Fed.  Rep.  same    effect,    see  American  Cereal 

667;  35  C.  C.  A.  237;  the  latter  de-  Co.  v.  Eli  Pettijohn  Cereal  Co.  (1). 

cision  affirmed  in  Elgin  Nat.  Watch  72  Fed.  Rep.  903,  908. 

Co.  V.  Illinois  Watch  Co.   (2),  179  16— Pillsbury- Washburn       Flour 

U.  S.  665.  Mills   Co.    v.    Eagle.    86    Fed.   Rep. 

14— Manhattan      Med.      Co.      v.  608,  30  C.  C.  A.  386.  58  U.  S.  App. 

490,  41  L.  R.  A.  162. 


136  HOPKINS   ON   TRADEMARKS.  [§  60 

ical  names  fancifully  used"  that  have  been  treated  as 
trademarks.  So  of  "Aldemey"  oleomargarine,^^ 
"Vienna"  bread/ ^  ''German"  sweet  chocolate  (''Ger- 
man" being  the  name  of  an  individual ).^'^  But  in  their 
last  analysis,  the  "fanciful  use"  ascribed  to  those  words 
by  the  Courts  are  simply  a  convenient  excuse  for  avoiding 
the  harsh  doctrine  of  Manhattan  Medicine  Co.  v.  Wood. 
The  misrepresentation  may  be  implied  from  the  lan- 
guage employed  though  not  in  express  words.-*^ 

§  60.  The  right  to  complain  of  unfair  use  of  geograph- 
ical name.— The  right  to  use  the  name  of  a  locality  in 
the  manufacture  and  sale  of  goods  is  a  general  right 
of  all  who  manufacture  in  that  locality.-^  It  therefore 
follows  that  where  any  one  not  living  in  that  locality 
uses  its  name  to  indicate  his  merchandise,  he  is  resorting 
to  a  trick  to  divert  business  from  the  dealers  in  the  same 
kind  of  merchandise  who  in  fact  live  in  the  locality  and 
honestly  use  its  name  as  a  mark  upon  their  goods.^^ 

The  action  to  restrain  such  an  unfair  competition  may 
be  brought  either  by  one^^  or  alP^  of  the  merchants  who 
are  entitled  to  the  use  of  the  name  of  the  locality  and  are 
using  it  upon  the  same  class  of  merchandise. 

§  61.  When  relief  will  be  granted  against  fraudu- 
lent use  of  geographical  names.— It  would    be    a    vain 

17 — Lauferty     v.     Wheeler,      83  Fruit  Canners'  Ass'n  v.  Myer,  104 

How.  Pr.  488.  Fed.  Rep.  82. 

18 — Fleischmann       v.       Schuck-  23 — Newman  v.  Alvord,  49  Barb, 

mann,  62  How.  Pr.  92.  588;    35   How.   Pr.   108;    Cox.   404; 

19_Walter  Baker  &  Co.  V.  Baker,  51   N.  Y.    189;    10   Am.   Rep.    588; 

77  Fed.  Rep.  181.  Klotz  v.  Hecht,  73  Fed.  Rep.  822; 

20 — Prince  Mfg.   Co.  v.   Prince's  Scheuer  v.  Muller,  20  C.  C.  A.  161, 

Metallic  Paint  Co.  135  N.  Y.  24,  31  74  Fed.  Rep.  225;  Gage-Downs  Co. 

N.  B.  Rep.  990,  17  L.  R.  A.  129.  v.  Featherbone  Corset  Co.,  83  Fed. 

21 — Pillsbury-Washburn     Co.    v.  Rep.    213;    Southern    White    Lead 

Eagle,  86  Fed.  Rep.  608,  30  C.  C.  A.  Co.  v.  Coit,  39  Fed.  Rep.  492;  A.  F. 

3g6.  Pike  Mfg.   Co.  v.  Cleveland  Stone 

22— Ibid.     "A  palatable  trick,"  it  Co.,  35  Fed.  Rep.  896. 

v/as   termed   by    Gresham,    J.,    in  24 — Pillsbury-Washburn     Co.     v. 

Southern  White  Lead  Co.  v.  Gary,  Eagle,  86  Fed.  Rep.  608. 
25   Fed.   Rep.    125-127.     California 


§  62]  WHAT   CONSTITUTES  A   VALID  TRADEMARK.  137 

task  to  eimiiierate  the  various  forms  of  misuse  of  geo- 
graphical names  which  hav^e  beeu  enjoined.  An  exam- 
ination of  the  cases  will  show  the  versatility  of  the  fraud- 
ulent dealer  in  devising  schemes  to  deceive  the  public 
and  deprive  the  legitimate  dealer  of  his  trade.  The 
13riuting  of  an  xVmerican  label  in  the  French  language 
has  been  treated  as  evidence  of  unfairness  in  competition 
against  French  exporters  to  the  United  States;-'"'  and 
the  statement  upon  a  package  that  its  contents  were 
**Chicorien  Kaffee  aus  der  fabrik  von  E.  B.  Muller  &  Co., 
in  Roulers  (Belgien),"  was  held  to  be  misleading  and 
unfair  where  the  facts  showed  that  the  only  part  of  the 
manufacture  done  in  Belgium  was  to  "harvest"  the  chic- 
ory root,  the  other  processes  being  done  in  the  United 
States.-*^  In  brief,  it  is  particularly  true  of  the  subject 
under  discussion  that  "a  court  of  equity  keeps  pace  with 
the  rapid  strides  of  the  sharp  competitors  for  the  prize 
of  public  favor  and  insists  that  it  shall  be  won  only  by 
fair  trade.  "-■^  Some  of  the  cases  are  cited  in  the  foot- 
note.-^ 

J;  62.  Proper  names  as  trademark.— It  is  a  self-evi- 
dent proposition  that  every  one  has  the  right  to  use  his 
own  name  for  purposes  of  trade.  It  was  held  by  Vice- 
Chancellor  AVood  that  a  man's  own  name  might  be  his 
trademark  even  when  united  with  other  words,  them- 
selves generic  and  hence  incapable  of  exclusive  appro- 
priation.      In     sustaining     the     words     "Ainsworth's 

25— Klotz  V.  Hecht,  73  Fed.  Rep.  Fed.  Rep.  492;  City  of  Carlsbad  v. 

822.  Thackeray,  57  Fed.  Rep.  18;  Cahn 

26— Scheuer  v.  Muller,    74    Fed.  v.   Gottschalk,   2   N.   Y.   Supp.   13; 

Rep.  225-228:    20  C.  C.  A.  161.  Hiram  Walker  &  Sons  v.  Mikolas, 

27 — R.    Heinisch's   Sons    Co.    v.  79   Fed.   Rep.   955;   Von  Mumm  v. 

Boker,  86   Fed.  Rep.   765-768.  Frash,   56  Fed.  Rep.   830;     Lea  v. 

28 — Anheuser-Busch  Brewing  Wolff,  15  Abb.  Pr.  N.  S.  1;  46  How. 
Ass'n  V.  Piza,  24  Fed.  Rep.  149;  Pr.  147;  Seb.  407;  Anheuser-Busch 
A.  F.  Pike  Mfg.  Co.  v.  Cleveland  Brewing  Co.  v.  Fred  Miller  Brew- 
Stone  Co..  35  Fed.  Rep.  896;  South-  ing  Co.,  87  Fed.  Rep.  864;  Manito- 
ern  White  Lead  Co.  v.  Cary,  25  woe  Pea-Packing  Co.  v.  William 
Fed.   Rep.   125;    Same  v.   Coit,   39  Numsen  &  Sons.  93  Fed.  Rep.  196. 


138  HOPKINS   ON   TRADEMARKS.  [§62 

Thread"  as  a  trademark  he  said:  "Is  not  a  man's  name 
as  strong  an  instance  of  trademark  as  can  be  suggested? 
—subject  only  to  this  inconvenience,  that  if  a  Mr.  Jones 
or  a  Mr.  Brown  relies  on  his  name,  he  may  find  it  a  very 
inadequate  security,  because  there  may  be  several  other 
manufacturers  of  the  same  name. '  '-^    But  any  name  may 
be  used  by  any  one  who  cares  to  designate  himself  by  it, 
and  in  this  sense  a  proper  name  can  never  be  an  essen- 
tial part  of  a  trademark,''^  because,  as  we  have  seen,  a 
valid  trademark  must  be  exclusive,  as  against  all    the 
world.     The  decisions  as  to  this  are    conflicting,    ver}' 
confusing,  and  in  many  instances  the  result  of  careless 
use  of  language.    Thus  Chancellor  Westbury  said:  "It  is 
true  that  a  name  or  the  style  of  a  firm   may    by   long 
usage  become  a  mere  ti*ademark. '  '^^    In  another  case  the 
same  learned  chancellor  said:  "A  name,  though  origi- 
nally the  name  of  the  first  maker,  may  in  time  become  a 
mere  trademark  or  sign  of  quality,  and  cease  to  denote 
or  to  be  current  as  indicating  that  any  particular  person 
is  the  maker.    In  many  cases  a  name  once  affixed  to  a 
manufactured  article  continues  to  be  used  for  genera- 
tions after  the  death  of  the  individual  who  first  affixed 
it."^^     In  the  first  named  case,  any  one  named  "Ains- 
worth"  might   lawfully  use  the  word  as  a  trademark. 
He  would  be  restrained  only  where  he  resorted  to  unfair 
competition  by  so  preparing  or  advertising  his  thread  as 
to  deceive  customers  into  the  belief  that  they  were  buy- 
ing the  thread  made  by  another  Ainsworth.    As  to  the 

29— Ainsworth  v.   Walmsley,    L.  trade."     Davis,  J.,  in  Drake  Medi- 

R.  1  Eq.  518;  35  L.  J.  Ch.  352;  12  cine   Co.   v.    Glessner,   68   Ohio   St. 

Jur  N.  S.  205;  14  L.  T.  N.  S.  220;  337,  67  N.  E.  Rep.  722. 

14  W.  R.   363;    Seb.   257.     •  31— Leather  Cloth  Co.  v.  Ameri- 

30— "In  a  technical  sense,  there  can  Leather  Cloth  Co.,  4  DeG.  J.  & 

can  be  no  trademark  in  the  name  S.  137-142;   Seb.  223. 

of   a   person,     because     all     such  32— Hall  v.  Barrows,  4  DeG.  J.  & 

names   are   generic,   and    because,  S.  150;    33  L.  J.  Ch.   204;   10  Jur. 

speaking  in  a  general  sense,  every  N.  S.  55;  9  L.  T.  N.  S.  561;  12  W. 

person   has   the   right  to   use   his  R.  322;  3  N.  R.  259;  Seb.  215. 
own   name   for    the     purposes    of 


§  63]  WHAT   CONSTITUTES  A   VALID  TRADEMARK.  139 

dicta  of  Lord  Westbury^  they  are  meaningless,  for  the 
same  reason.  If  a  nuui's  name  is  not  a  valid  trademark 
for  his  goods  in  his  life-time,  because  any  one  of  the  same 
name  may  use  it  for  the  same  purpose,  how  can  it  possi- 
bly become  a  trademark  in  the  use  of  his  successoi's  after 
his  death? 

§  63.  Names  of  celebrities.— Far  different  is  the  rule 
as  to  names  which  are  those  of  celebrities,  their  use  as 
trademarks  being  universally  recognized.-'^  Yet  here  the 
scientific  objection  remains  that  any  one  bearing  the 
name  of  the  ill-fated  Corsican  would  have  the  undoubted 
right  to  manufacture  ''Napoleon"  cigarettes,  notwith- 
standing the  prior  appropriation  of  that  word  as  a 
trademark  by  another  manufacturer.  If  the  words  ' '  Em- 
peror Napoleon"  were  so  approiniated,  they  would  un- 
doubtedly be  good  as  against  the  world.^"* 

§  64.  In  general,  of  one's  own  name.— Although  the 
custom  is  universal  for  male  persons  to  bear  the  name 
of  their  parents,  there  is  nothing  in  the  common  law  pro- 

33—"  'Roger     Williams,'    though  purpose,  a  broad  distinction  which 

the  name  of  a  famous  person,  long  was    early    perceived    and    which 

since  dead,  is,  as  applied  to  cotton  caused  some  difficulty  in  the  uni- 

cloth,  a  fancy  name,  as  would  be  versal  acceptance  of  a  name  as  an 

so  applied  the  names  of  Washing-  efficacious  trademark.     The  differ- 

ton,  Greene,  Perry,  or  of  any  other  ence  is,  that  a  name  is  in  its  very 

heroes,  living  or  dead."     Ames,  C.  nature  generic,  and  is  properly  ap- 

J.,   in   Barrows  v.  Knight,  6  R.   I.  plied  to  designate,  not  one  individ- 

434;    Cox,    238;    Seb.    184.      It  has  ual  in  the  world,  but,  it  may  be, 

been   so   held   of   the   word     "Bis-  many  thousands,  to  all  of  whom  it 

marck"   (used  as  a  trademark  for  is  equally  appropriate.     The  addi- 

paper  collars)   during  the  life-time  tion  of  the  christian  to  the  surname 

of  Bismarck.       Messerole  v.  Tyn-  does,  indeed,  diminish  the  number 

berg,  36  How.  Pr.  14;   4  Abb.  Pr.  of   persons   to   whom   the   appella- 

N-  S.  410.  tion    belongs;    but    the     christian 

34— The  learned  English  barris-  name  is  commonly  abbreviated  to 

ter     Sebastian,  in     his     work     on  an  initial  letter,  and,  in  any  case. 

Trademarks,  thus  states  the  rule:  the  surname  is  the  important  part 

'There  is  between  a  name  of  an  in-  of  the  name,  beyond  which  many 

dividual  or  firm  used  as  a  trade-  persons  do  not  care  to  investigate." 

mark,  and  a  fancy  name  or  arbi-  Sebastian,    Trademarks     (4th  ed.), 

trary  symbol  used  for    the    same  24. 


140 


HOPKINS   ON   TRADEMARKS. 


[§64 


liibiting  a  man  from  taking  any  other  name  he  may 
choose.^^  This  doctrine  has  long  been  settled  beyond 
peradventure.  It  is  of  course  equally  certain  that  one 
must  not  use  his  name  so  as  to  work  a  fraud  upon  others 
of  the  same  name.^*^  Subject  to  this  restriction  a  man  will 
never  be  restrained  from  the  full  enjoyment  of  his  name, 
whether  that  name  be  that  of  his  parents  or  adopted  by 
himself.  As  stated  by  Turner,  L.  J,:  "Where  the  defend- 
ant sells  goods  under  his  own  name,  and  it  happens  that 
the  plaintiff  has  the  same  name,  it  does  not  follow  that 

35— England  v.  New   York   Pub.  S8  111.  53;    38  Am.  Rep.  98,  where 

Co.,  8  Daly,  375;   Price  &  Steuarr,  injunction   to  restrain   the   use   of 

14;   Re  Snook,  2  Hilt.  566.  Linton  an  assumed  name  was  denied  un- 

V.  First  National  Bank  of  Kittan-  der  peculiar  circumstances, 
ning,  10  Fed.  Rep.  894-897.  36— The  doctrine  is  well  settled 

The  right  to  assume  a  name. —  that  "every  one  has  the    absolute 

Lord    Chelmsford    observes:       "In  right  to  use  his  own  name  honest- 

this  country  we  do  not  recognize  ly     in     his     own     business,     even 

the  absolute  right  of  a  person  to  though  he  may  thereby  incidental- 

a  particular  name  to  the  extent  of  ly   interfere   with   and   injure  the 

entitling   him   to   prevent   the    as-  business   of   another     having     the 

sumption     of     that     name     by     a  same   name,     in     such     case     the 

stranger.     The  right  to  the  exclu-  inconvenience    or    loss     to     which 

sive  use  of  a  name  in  connection  those  having  a  common  right  are 

with  a  trade  or  business  is  fami-  subjected  is  damnum  absque  inju- 

liar   to   our   law;    and   any   person  ria.       But  although  he   may  thus 

using  that  name,   after  a  relative  use  his  name,  he  cannot  resort  to 

right  of  this  description  has  been  any  artifice   or  do  any  act  calcu- 

acquired  by  another,  is  considered  lated  to  mislead  the  public  as  to 

to  have  been  guilty  of  a  fraud,  or  the   identity  of  the  business  firm 

at  least  of  an  invasion  of  another's  or  establishment,  or  of  the  article 

right,   and    renders   himself   liable  produced   by  them,  and  thus  pro- 

to   an   action,   or   he   may   be    re-  duce   injury  to   the  other    beyond 

strained  from  the  use  of  the  name  that  which  results  from  the  simi- 

by   an   injunction.     But  the   mere  larity  of  name."     Devens,    J.,    in 

assumption   of  a   name  which    is  Russia  Cement  Co.  v.  Le  Page,  147 

the  patronymic  of  a  family  by  a  Mass.  206-208;   17  N.  E.  Rep.  304; 

stranger    who    had     never    before  quoted    and    followed     in     Singer 

been  called   by  that    name,    what-  Mfg.  Co.  v.  June  Mfg.  Co.,  163  U. 

ever  cause  of  annoyance  it  may  be  S.    169-187.     This   is   the   rule   an- 

to  the  family,  is  a  grievance   for  nounced  in  Burgess  v.  Burgess,  3 

which  our  law  affords  no  redress."  DeG.   M.    &   G.    896;    22    L.    J.    Ch. 

Du  Boulay  v.  Du  Boulay,  L.  R.   2  675;  17  Jur.  292;   21  L.  T.  53.  And 

P.  C.  430-441;  and  see  Olin  v.  Bate,  see  Linoleum  Mfg.  Co.  v.  Nairn,  7 


§  65]  WHAT    CONSTITUTES   A    V.VLID  TKADEMARK.  141 

the  defendant  is  selling  his  goods  as  the  goods  of  the 
plaintiff.  It  is  a  question  of  evidence  in  each  case 
whether  there  is  false  representation  or  not."^^  Hence 
we  see  that  the  subject  of  this  section  is  more  propei-ly 
treated  under  the  head  of  unfair  competition,  and  it  is 
therefore  considered  in  that  connection  in  the  next  sec- 
tion, 

§  65.  The  use  of  proper  names  in  trade.— We  have  in 
the  preceding  sections  given  some  consideration  to  the 
subject  of  proper  names,  considered  with  reference  to 
their  exclusive  appropriation  for  mercantile  purposes. 
The  conclusion  reached  was  that  in  a  scientijfic  sense 
there  can  be  no  trademark  in  a  proper  name,  because  all 
proper  names  are  generic.  The  author  believes  that  this 
rule  is  well  sustained  by  the  reasons  heretofore  given  at 
length.  In  their  anxiety  to  effect  perfect  justice  the 
courts  have  frequently  said  that  such  words  were  valid 
trademarks,-'*'^  but  the  reasoning  of  the  opinions  indicated 
that  the  use  of  the  language  adopted  was  careless  and 
erroneous.     The  proper  method  of  reading  the  class  of 

Ch.  Div.  834-837;  47  L.  J.  Ch.  430;  562;  45  Off.  Gaz.  347;   Singer  Mfg. 

38  L.  T.  N.  S.  448;   26  W.  R.  463;  Co.  v.  Larsen,  Fed.  Case  No.  12902, 

Dig.  536;   Croft  v.  Day,  7  Beavan,  8  Bissell,  151-153;  Price  &  Steuart, 

84;  Dig.  76;  Holloway  v.  Holloway,  72;  Singer  Mfg.  Co.  v.  Bent,  1G3  U. 

13  Beavan,  209;  Dig.  106;  Wother-  S.  205. 

spoon  V.  Currie,  L.  R.  5  H.  L.  508;         37 — Burgess  v.  Burgess,  3    DeG. 

Montgomery  v.  Thompson,    (1891)  M.  &  G.  896;   22  L.  J.  Ch.  675;   17 

App.  Cas.  217;  Rogers  v.  Rogers,  53  Jur.   292;    21  L.  T.  O.  S.  53;    Cox. 

Conn.  121;  55  Am.  Rep.  78;  33  Alb.  117.     A  man  cannot  sell  his  own 

L.   J.   70;    Oilman    v.    Hunnewell,  name  to  another  for  the  purpose 

122  Mass.  139;     Cox    541;     Menee-  of  carrying  on  a  rival  trade  against 

ly    V.     Meneely,     62    N.    Y.     427;  another   bearing  the   name  so   at- 

1     Hun,     673;    2     Thomp.     &     C.  tempted  to  be  used.    Melachrino  v. 

540;    62   N.  Y.    (17   Sickels),   427;  Melachrino  Cigarette  Co.,  4  R.  P. 

20  Am.  Rep.  489;  2  Am.  L.  T.  N.  S.  C.  215;    Cartmell,  223. 
482;    Dig.   472;    Pillsbury  v.   Pills-         38— Standinger  v.  Standinger,  19 

bury,  24  U.  S.  App.  395-404;   Law-  Leg.   Int.   85;    Fulton  v.   Sellers,  4 

rence  Mfg.  Co.  v.  Tennessee  Mfg.  Brews.  42;  Candee  v.  Deere.  54  111. 

Co.,   138   U.   S.    537;    31   Fed.  Rep.  439;    Howe   v.    Howe    Sewing   Ma- 

776;  Brown  Chem.  Co.  v.  Meyer,  139  chine  Co.,  50  Barb.  236;    Gillis  v. 

U.  S.  540;  31  Fed.  Rep.  453;  Coats  Hall,  li  Brews.  509. 
V.   Merrick   Throad   Co..   149  U.   S. 


142  HOPKINS   ON   TRADEMARKS.  [§  66 

cases  just  referred  to  is  to  bear  in  mind  that,  while  the 
courts  recognized  the  law  of  unfair  competition,  they  did 
not  know  or  recognize  it  by  that  name.  The  tendency 
was  to  restrain  fraudulent  competition,  but  to  restrain  it 
by  invoking  trademark  law.  In  the  inaccurate  reasoning 
of  the  courts,  the  fact  that  a  man  whose  name  was  ''E.  P. 
Hall"  came  into  equity  seeking  an  injunction  against  a 
defendant  bearing  a  different  name,  but  printing  ''E.  P. 
Hall"  upon  his  merchandise,  suggested  that  the  easiest 
manner  of  disposing  of  the  issues  was  to  say  that  Hall 
had  a  trademark  right  in  his  own  name,  which  right  the 
defendant  was  infringing.^^  So  the  defendant  was  very 
properly  enjoined,  justice  was  done,  and  the  technical 
error  of  the  decision  was  overlooked.  For  error  it  was, 
because  the  proper  name  Hall,  even  prefixed  by  the 
initials  E.  P.,  is  a  generic  name  which  any  one  may  use, 
provided  that  he  does  not  so  use  it  as  to  pass  off  his 
goods  upon  the  purchasing  public  as  the  goods  of  an- 
other. 

If  any  further  proof  were  needed  to  show  the  rule  to 
be  accurate,  we  could  examine  the  cases  in  which  the 
use  of  a  proper  name  could  not  possibly  give  a  right  of 
trademark,  because  the  name  was  not  used  in  application 
to  merchandise.  One  of  the  most  striking  instances  of 
this  kind  is  afforded  by  the  case  in  Avhich  a  theatrical 
combination  was  protected  in  the  use  of  the  name  ' '  Chris- 
ty's  Minstrels.  "^^ 

39 — Gillis  V.  Hall,  3  Brews.  509.  in  his  sense  of  equity,  saw  that 
40 — Christy  v.  Murphy,  12  How.  a  wrong  was  being  committed  and 
Pr.  77.  In  his  opinion,  Judge  that  it  onght  to  be  enjoined,  and 
Clarke  makes  these  prefatory  re-  he  enjoined  it.  The  remedy  was 
marks:  "It  is  now  well  estab-  just  as  effective  and  proper  as  if 
lished  that  the  court  will  grant  an  he  had  comprehended  the  law  of 
injunction  against  the  use  by  one  unfair  competition  as  treated  in 
tradesman  of  the  trademarks  of  the  later  decisions.  But  if  he  had 
another.  Will  this  protection  be  understood  the  principles  he  ad- 
extended  to  enterprises  undertak-  ministered  he  would  not  have  re- 
en  for  the  purpose  of  affording  ferred  to  the  law  of  trademarks  to 
amusement  or  recreation  to  the  justify  his  conclusion, 
public?"     The   court  instinctively. 


%66] 


WHAT   CONSTITUTES  A   VALID  TRADEMARK. 


143 


§  66.  The  use  of  proper  names  generally.— From  this 
preliminary  discu.ssiou  of  the  priiicipJes  of  unfair  com- 
petition we  can  now  undertake  to  classify  what  we  may 
term,  for  want  of  a  better  phraseology,  the  proper-name 
cases. 

(a)  Where  the  defendant  is  using  his  own  name  in 
good  faith.  In  these  cases  there  is  no  unfairness  in  the 
competition  between  the  parties,  and  the  defendant  will 
not  be  restrained.^' 

But  in  this  connection  it  should  be  observed  that  one 


41 — Burgess  v.  Burgess,  3  DeG. 
M.  &  G.  806;  17  Jur.  292;  Seb.  117; 
Coats  V.  Piatt,  17  Leg.  Int.  213; 
Faber  v.  Faber,  49  Barb.  357;  3 
Abb.  Pr.  N.  S.  115;  Ck)x,  401;  Seb. 
278;  Wolfe  v.  Burke,  56  N. 
Y.  115;  Meneely  v.  Meneely, 
1  Hun,  367;  62  N.  Y.  427;  Seb. 
472;  Decker  v.  Decker,  52  How.  Pr. 
218;  Seb.  525;  Prince  Metallic 
Paint  Co.  v.  Carbon  Metallic  Paint 
Co.,  Seb.  573;  Rodgers  v.  Nowill, 
6  Hare,  325;  Seb.  82;  Clark  v. 
Clark,  25  Barb.  76;  Cox.  206;  Seb. 
148;  Comstock  v.  White,  IS  How. 
Pr.  421;  Cox,  232;  Binninger  v. 
Wattles,  28  How.  Pr.  206;  Cox, 
318;  Seb.  240;  Hardy  v.  Cutter,  3 
Off.  Gaz.  468;  Seb.  427;  Carmichef 
V.  Latimer,  11  R.  L  395;  23  Am. 
Rep.  481;  16  Alb.  L.  J.  73;  Seb. 
521;  Gilman  v.  Hunnewell,  122 
Mass.  139;  Seb.  541;  McLean  v. 
Fleming,  96  U.  S.  245;  13  Off.  Gaz. 
913;  Brown  Chemical  Co.  v.  Meyer, 
139  U.  S.  540;  Cox,  Manual,  726; 
Wm.  Rogers  Mfg.  Co.  v.  Rogers  & 
S.  Mfg.  Co.,  11  Fed.  Rep.  495;  Lan- 
dreth  v.  Landreth,  22  Fed.  Rep.  41; 
Wm.  Rogers  Mfg.  Co.  v.  R.  W.  Rog- 
ers Co.,  66  Fed.  Rep.  56;  affirmed, 
17  C.  C.  A.  57,  70  Fed.  Rep.  1019; 
Wm.  Rogers  Mfg.  Co.  v.  Rogers,  84 
Fed.  Rep.  639;   Rogers  v.  Taintor, 


97  Mass.  291;  Thynne  v.  Shove,  L. 
R.  (1890)  45  Ch.  D.  577-582;  Inves- 
tor Pub.  Co.  V.  Dobinson,  82  Fed. 
Rep.  56;  Marcus  Ward  &  Co.  v. 
Ward,  15  N.  Y.  Supp.  913;  61  Hun, 
625;  Drummond  Tobacco  Co.  v. 
Randle,  114  111.  412;  2  N.  E.  Rep. 
536;  Newark  Coal  Co.  v.  Spangler, 
54  N.  J.  Eq.  354;  34  Atl.  Rep.  932; 
American  Cereal  Co.  v.  Eli  Petti- 
john  Cereal  Co.  (2),  76  Fed.  Rep. 
372;  22  C.  C.  A.  336,  affirming  s. 
c.  72  Fed.  Rep.  903;  Duryea  v.  Na- 
tional Starch  Mfg.  Co.,  25  C.  C.  A 
139,  45  U.  S.  App.  649;  79  Fed. 
Rep.  651;  affirmed,  101  Fed.  Rep. 
117;  Wm.  Rogers  Mfg.  Co.  v. 
Simpson,  54  Conn.  527;  Foster  v. 
Webster  Piano  Co.,  13  N.  Y.  Supp. 
338;  59  Hun,  624;  Tussaud  v. 
Tussaud,  38  W.  R.  440;  Iowa  Seed 
Co.  V.  Dorr,  70  la.  481;  Turton  & 
Sons  (Ltd.)  V.  Turton,  42  Ch.  D. 
128;  American  Cereal  Co.  v.  Eli 
Petti  John  Cereal  Co.  (1),  72  Fed. 
Rep.  903 ;  Bingham  School  v.  Gray, 
122  N.  Car.  699,  30  S.  E.  Rep.  304, 
41  L.  R.  A.  243;  Harson  v.  Halk- 
yard,  R.  I.,  46  Atl.  Rep.  271;  Von 
Faber  v.  Faber,  124  Fed.  Rep.  603, 
611;  National  Starch  Mfg.  Co.  v. 
Duryea,  41  C.  C.  A.  244,  101  Fed. 
Rep.  117. 


144:  UOPKINS   ON   TK^UJEMAKIIS.  [§  66 

vrlio  enters  into  competition  with  another  person  of  the 
same  name,  who  has  an  old  and  established  business,  is 
under  an  obligation  to  more  widely  differentiate  his 
goods  fi'om  those  of  the  latter  than  is  required  of  third 
Ijersons  having  different  names.^-  A  court  of  equity  may 
direct  a  defendant,  in  such  a  case,  how  to  use  his  name 
so  as  not  to  injure  the  complainant  who  bears  the  same 
name."*^  This  direction  has  at  times  taken  the  form  of 
an  injunction  restraining  the  party  at  fault  from  using 
his  name  in  connection  with  his  product,  except  in  con- 
junction with  the  words  "No  connection  with  the  orig- 
inal  "   (giving  the  name  and  location  of  the    other 

party),  or  words  of  like  import.'^ ^ 

(b)  "V\niere  the  defendant  is  using  his  own  name  or  that 
of  another  in  a  manner  wilfully  calculated  to  deceive  the 
public  into  a  belief  that  his  goods  are  the  goods  of  the 
plaintiff  who  bears  the  same  name.  This  presents  a 
state  of  facts  that  warrants  the  invocation  of  the  injunc- 
tive power  of  equity;  the  decisions  being  practically' 
unanimous.^^ 

42 — Baker    &    Co.    v.    Baker,     77  53;    Seb.  117;   Taylor  v.  Taylor,  2 

Fed.  Rep.  181;    78  Off.  Gaz.  1427;  Eq.  R.  290;  23  L.  J.  Ch.  255;  22  L. 

Walter  Baker  &  Co.  v.  Sanders,  26  T.  271;    Seb.  124;   Clark  v.  Clark, 

C.  C.  A.  220,  80  Fed.  Rep.  889-895.  25  Barb.   76;    Cox,   206;    Seb.  148; 

43 — Baker  &  Co.  v.  Baker,  77  Stonebraker  v.  Stonebraker,  33  Md. 
Fed.  Rep.  181;  78  Off.  Gaz.  1427;  252;  Seb.  333;  Holmes,  Booth  & 
Tarrant  &  Co.  v.  Hoff,  76  Fed.  Rep.  Haydens  v.  Holmes,  Booth  &  At- 
959;  affirming  s.  c,  71  Fed.  Rep.  wood  Mfg.  Co.,  37  Conn.  278;  9  Am. 
163;  Walter  Baker  &  Co.  v.  San-  Rep.  324;  Seb.  340;  James  v. 
ders,  80  Fed.  Rep.  889-894;  City  of  James,  L.  R.  13  Eq.  421;  41  L.  J. 
Carlsbad  v.  Schultz,  78  Fed.  Rep.  Ch.  353;  26  L.  T.  N.  S.  568;  20  W. 
469.  In  the  last  named  case  Judge  R.  434;  Seb.  388;  McLean  v.  Flem- 
Coxe  designed  a  label  for  the  de-  ing,  96  U.  S.  245;  13  Off.  Gaz.  913; 
fendant's  use,  a  copy  of  which  is  Thorley's  Cattle  Food  Co.  v.  Mas- 
embodied  in  his  opinion.  sam,  42  L.  T.  N.  S.  851;  Cox,  Man- 

44 — Allegretti    Chocolate    Cream  ual,  668;  Russia  Cement  Co.  v.  Le 

Co.  V.  Keller.  85  Fed.  Rep.  643.  Page,  147  Mass.  206;  17  N.  E.  Rep. 

45— Holloway    v.    Holloway,     13  304,  44  Off.  Gaz.  823;  Cox,  Manual, 

Beav.    209;    Seb.    106;    Burgess   v.  706;  Brown  Chemical  Co.  v.  Meyer, 

Burgess,  3  DeG.  M.  &  G.  896;  22  L.  55   Off.    Gaz.   287;    139   U.    S.    540; 

J.  Ch.  675;    17  Jur.   292;    21  L.  T.  Meyer  v.  Bull  Medicine  Co.,  06  Off. 


66] 


WHAT   CONSTITUTES  A   VALID  TRADEMARK. 


145 


"Every  one  lias  the  absolute  ri^lit  to  use  his  own  name 
honestly  in  his  own  business,  even  though  he  may  thereby 
incidentally  interfere  with  and  injure  the  business  oi"  an- 
other having  the  same  name.  In  such  case  the  inconven- 
ience or  loss  to  which  those  having  a  common  right  are 
subjected  is  damnum  absque  injuria.  But,  although  he 
may  thus  use  his  name,  he  cannot  resort  to  any  artifice 
or  to  any  act  calculated  to  mislead  the  public  as  to  the 
identity  of  the  business  fiiTii  or  establishment,  or  of  the 
article  produced  by  them,  and  thus  produce  injury  to  the 
other  beyond  that  which  i-esults  from  the  similarity  of 
name.  Where  the  name  is  one  which  has  previously 
thereto  come  to  indicate  the  source  of  manufacture  of 
particular  devices,  the  use  of  such  name  by  another,  un- 
accompanied with  any  precaution  or  indication,  in  itself 
amounts  to  an  artifice  calculated  to  produce  the  decep- 
tion alluded  to  in  the  foregoing  adjudications."^''' 


Gaz.  197;  18  U.  S.  App.  372;  7  C. 
C.  A.  558;  58  Fed.  Rep.  884;  Hig- 
gins  Co.  V.  Higgins  Soap  Co.,  144 
N.  Y.  462;  39  N.  E.  Rep.  490,  43 
Am.  St.  Rep.  769;  Wm.  Rogers 
Mfg.  Co.  V.  R.  W.  Rogers  Co.,  66 
Fed.  Rep.  66;  73  Off.  Gaz.  970; 
DeLong  v.  DeLong  Hook  &  Eye 
Co.,  74  Off.  Gaz.  809;  Garrett  v. 
Garrett  &  Co.,  24  C.  C.  A. 
173,  79  Off.  Gaz.  1681;  78 
Fed.  Rep.  472-478;  Baker  &  Co. 
V.  Baker,  77  Fed.  Rep.  181;  78  Off. 
Gaz.  1427;  Rogers  Mfg.  Co.  v.  Rog- 
ers &  Spurr  Mfg.  Co.,  11  Fed.  Rep. 
495;  Price  &  Steuart,  621;  Tuerk 
Power  Co.  v.  Tuerk,  36  N.  Y.  Supp. 
384;  92  Hun,  65;  Gillis  v.  Hall, 
Cox,  596;  Devlin  v.  Devlin,  69  N.  Y. 
212;  Tussaud  v.  Tussaud,  38  W.  R. 
440;  Frazer  v.  Frazer  Lubricator 
Co.,  121  111.  147;  13  N.  E.  Rep.  639: 
Shaver  v.  Shaver,  54  la.  208;  India 
Rubber  Comb  Co.  v.  Rubber  Comb 
Co.,  45  N.  Y.  Super.  Ct.  R.  258: 
Gage  V.  Canada  Pub.  Co.,  11  Can. 


Sup.  306;  Rogers  Co.  v.  Wm.  Rog- 
ers Mfg.  Co.,  70  Fed.  Rep.  1017; 
Landreth  v.  Landreth,  22  Fed. 
Rep.  41;  Manufacturing  Co.  v. 
Simpson,  54  Conn.  527;  Rogers  v. 
Rogers,  53  Conn.  121;  Hohner  v. 
Gratz,  52  Fed.  Rep.  871;  Williams 
V.  Johnson,  2  Bos.  1;  Cox,  214; 
Stuart  V.  F.  G.  Stewart  Co., 
33  a  C.  A.  480,  91  Fed. 
Rep.  243;  reversing  s.  c,  85 
Fed.  Rep.  778;  International  Sil- 
ver Co.  V.  Simeon  L.  &  George  H. 
Rogers  Co.,  110  Fed.  Rep.  955; 
Chickering  v.  Chickering  &  Sons. 
120  Fed.  Rep.  69,  56  C.  C.  A.,  475; 
Royal  Baking  Powder  Co.  v.  Royal, 
58  C.  C.  A.  499,  122  Fed.  Rep.  337; 
International  Silver  Co.  v.  Wm.  G. 
Rogers  Co.,  113  Fed.  Rep.,  526: 
Robinson  v.  Storm,  103  Tenn.  40, 
52  S.  W.  Rep.  880. 

46 — Singer  Mfg.  Co.  v.  June  Mfg. 
Co.,  163  U.  S.  169.  "A  man  may 
not  use  his  own  name  to  accom- 
plish  a    fraud,   designed    or    con- 


146  HOPKINS  ON  TRADEMARKS.  [§  66 

(c)  Where  the  defendant  is  a  corporation  whose  cor- 
porate name  includes  a  proper  name  and  was  selected 
by  its  incorporators  with  the  intent  and  for  the  purpose 
of  deceiving  the  public  into  the  belief  that  its  goods  are 
the  goods  of  the  plaintiff.  Such  frauds  will  of  course  be 
enjoined.'*" 

(d)  ^"\'liere  the  defendant  has,  solely  for  the  purpose 
of  unfair  trade,  secured  from  some  person  having  the 
same  name  as  the  plaintiff  a  license  to  use  that  name  for 
the  purpose  of  fraudulently  competing  with  the  plaintiff. 
This,  being  an  artiiice  in  promotion  of  unfair  trade,  ren- 
ders the  defendant  liable  to  injunction.^^ 

In  such  a  case,  the  licensor  is  a  joint  tort-feasor  with 
the  licensee.^'' 

Finally,  in  regard  to  the  assignment  of  the  right  to 
use  one's  name,  the  law  is  well  settled  that  a  man  can  so 
assign  the  right  to  use  his  name  subject  only  to  the  gen- 
eral rules  of  public  policy  governing  contracts  in  re- 
straint of  trade.^*' 

The  right  to  use  the  name  Booth,  in  connection  with  a 
theatre,  described  in  the  assignment  of  a  lease  as 
''Booth's  Theatre,"  was  held  to  pass  to  the  assignee  be- 
cause it  had  become  affixed  to  the  establishment;''^  and 

structive."  Jenkins,  J.,  in  Stuart  v.  Fed.   Rep.    778;    Dodge   Stationery 
F.    G.    Stewart   Co.,   91   Fed.   Rep.  Co.  v.  Dodge,  Cal.,  78  Pac.  Rep.  879. 
243-248,  33  C.  C.  A.  480.  48 — Melachrino      v.     Melachrino 
47 — Wm.     Rogers     Mfg.     Co.     v.  Egyptian  Cigarette  Co.,  4  R.  P.  C 
Rogers,     73      Off.      Gaz.      970;     84  215;  Cartmell,  223;  Sawyer  v.  Kel- 
Fed.  Rep.  639;   Rogers  Mfg.  Co.  v.  logg,  7  Fed.  Rep.  720;  Cox,  Manual, 
Rogers  &  Spurr  Mfg.  Co.,  11  Fed.  681;  R.  Heinisch's  Sons  Co.  v.  Bo- 
Rep.  495;    Higgins  Co.  v.  Higgins  ker,  86  Fed.  Rep.  765;   Garrett  v. 
Soap  Co.,  144  N.  Y.  462;   39  N.  E.  T.  H.  Garrett  &  Co.,  78  Fed.  Rep. 
Rep.    490,    43   Am.    St.    Rep.     769;  472,  24  C.  C.  A.  173. 
Plant  Seed  Co.  v.  Michel  Plant  &  49— Wm.  G.  Rogers  Co.  v.  Inter- 
Seed  Co.,  23  Mo.  App.  579;  Garrett  national  Silver  Co.,  55  C.  C.  A.  83. 
V.     T.     H.      Garrett     &     Co.,     24  118  Fed.  Rep.  133. 
C.     C.     A.     173,     78     Fed.     Rep.  50— Brewer    v.    Lamar,    69     Ga. 
472;  Clark  Thread  Co.  v.  Armitage,  656,  47  Am.  Rep.  766. 
21  C.  C.  A.  178,  74  Fed.  Rep.  936;  51— Booth  v.  Jarrett,  52  How.  Pr. 
Stuart  V.   F.   G.    Stewart    Co.,    91  169;    Seb.  524. 
Fed.  Rep.  243;   reversing  s.  c,  85 


§  66]  WHAT   CONSTITUTES   A   V.\JJD   TRADEMARK.  147 

it  may  follow  that  proper  names  attached  to  or  used  in 
connection  with  places  of  amusement  generally  would 
pass  to  an  assi^iee  without  specific  enumeration  in  the 
instrument  of  assignment. 

It  was  suggested  in  the  case  of  Christy  v.  Murphy,  in- 
volving the  right  to  use  the  words  "Christy's  Minstrels," 
that  if  the  plaintiff  had  seen  fit  to  do  so  he  could  have 
conveyed  to  the  defendants  an  irrevocable  license  to  use 
that  name  in  connection  with  that  form  of  theatrical 
enterprise.*'"'-  But  in  the  more  recent  case  of  Messer  v. 
The  Fadeites,  the  supreme  court  of  Massachusetts,  Latli- 
rop,  J.,  dissenting,  refused  to  recognize  an  assignment 
of  the  name  of  an  orchestra,  holding  that  while  the  or- 
ganizer and  conductor  of  a  musical  organization  may 
have  some  right  of  ownership  in  it,  such  right  is  purely 
personal,  depending  upon  the  personal  reputation  or  skill 
of  the  conductor,  and  is  therefore  not  assignable;  and 
that  the  continued  use  of  the  name  would  mislead  and 
therefore  work  a  fraud  upon  the  public.^^  While  the 
name  involved  ("The  Fadettes")  is  not  the  name  of  a 
person,  the  decision  is  properly  noticed  here  as  a  strik- 
ing deparature  from  the  doctrine  of  Christy  v.  Murphy, 
supra,  and  from  what  the  author  conceives  to  be  the  law. 
The  dissenting  opinion  of  Justice  Lathrop  is  well 
grounded  on  authority,  and  the  reader  is  refen^ed  to  it 
for  his  reasoning.  Briefly,  the  court  ought  to  have  done 
as  has  been  occasionally  done  in  the  federal  courts, 
namely,  it  should  have  instructed  the  assignee  of  the 
name  "The  Fadettes"  how  to  use  that  name  in  its  adver- 
ing  matter  so  as  not  to  deceive  the  public  into  a  belief 
that  the  orchestra  was  still  under  the  personal  direction 
of  its  fonner  manager  and  director.  To  hold  that  the 
assignment  was  void  was  to  put  a  premium  on  dishon- 
esty. 

It  is  interesting  to  note  that  in  a  subsequent  case  the 

52 — Christy  v.  Murphy,  12  How.         53 — Messer  v.  The  Fadettes,  168 
Pr.  77;    Cox,  164;    Seb.  137.  Mass.  140. 


148  HOPKINS   ON   TRADEMARKS.  [§  67 

same  court  affirms  a  decree  directing  a  defendant  to 
clearly  mark  his  goods  so  as  to  indicate  they  are  not  the 
plaintiff 's.5^ 

One  who  has  assigned  the  right  to  use  his  name  in  spe- 
cific trade  will  be  enjoined  from  using  his  own  name  in 
that  trade,  in  competition  with  his  assignee,  for  such 
competition  would  be  unfair  and  fraudulent.^^  Pro- 
moters of  a  corporation  whose  names  have  been  used  as 
a  part  of  the  corporate  name  cannot  be  pennitted  to  use 
their  names  in  connection  with  and  as  the  name  of  a  rival 
company.  Such  conduct  will  be  enjoined  because  of  ' '  the 
injury  to  the  party  aggrieved,  and  the  imposition  upon 
the  public,  by  causing  them  to  believe  that  the  goods  of 
one  man  or  firm  are  the  production  of  another. '  '^® 

In  conclusion,  the  general  rule  underlying  this  class  of 
cases  has  been  aptly  stated  as  follows:  ''All  these  cases 
in  equity  depend  upon  an  appropriation  by  one  person 
of  the  reputation  of  another,  sometimes  actually  fraudu- 
lent, and  sometimes  only  constructively  so."^^ 

§  67.  Fictitious  proper  names.— Whether  the  use  of  a 
fictitious  proper  name  will  vitiate  an  accompanying 
trademark  so  as  to  deprive  its  owner  of  relief  in  equity 
depends  upon  whether  fraud  is  accomplished  through  the 
use  of  the  name.    Thus,  one  Thomas  Nelson  Dale,  mark- 

54 — Flagg   Mfg.   Co.   v.   Holway,  R.   365.     And   where  the  assignor 

—  Mass. ,  59  N.  E.  Rep.  667.  has  acquiesced  in   the  opening   of 

55 — Meyers  v.  Kalamazoo  Buggy  mail  addressed  to  him,  by  his  as- 
Co.,  54  Mich.  215;  Thynne  v.  signee,  he  will  be  enjoined  from 
Shove,  L.  R.  (1890)  45  Ch.  D.  577;  receiving  and  opening  such  mail 
Wood  V.  Sands,  Seb.  467;  Russia  addressed  to  him.  Dr.  David  Ken- 
Cement  Co.  v.  Le  Page,  147  Mass.  nedy  Corp.  v.  Kennedy,  55  N.  Y. 
206;    17  N.  E.  Rep.   304;     Kidd  v.  Supp.  917. 

Johnson,  100   U.   S,   617;     Spieker  56— Holmes,  Booth  &  Haydens  v. 

V.  Lash,  102  Cal.  38-45;    Hoxie  v.  The  Holmes,  Booth  &  Atwood  Mfg. 

Chaney,  143   Mass.  592,   10    N.    E.  Co.,  37  Conn.  278;    9  Am.  Rep.  324; 

Rep.   713;     Skinner    v.    Oakes,   10  Seb.  340. 

Mo.  App.  45;     Grow  v.   Seligman,  57 — Lowell,   J.,    in   Wm.    Rogers 

47  Mich.  647;    Churton  v.  Douglas,  Mfg.   Co.   v.   Rogers  &  Spurr  Mfg. 

Johns.    174;     28   L.  J.  Ch.   841;     5  Co.,  11  Fed.  Rep.  495-499. 
Jur.  N.  S.  887;    33  L.  T.  57;    7  W. 


§  68]  WHAT    CONSTITUTES   A    VALID   TRADEMARK.  149 

ing  thread  made  and  sold  by  him  with  the  fictitious  firm 
name  "Thomas  Nelson  &  Co."  was  gnmted  an  injunction 
against  an  infringer,  the  court  saying  "the  public  is  not 
in  fact  deceived,  as  it  is  shown  that  no  such  firm  exists 
as  Thomas  Nelson  &  Co.  who  are  known  to  be  manufac- 
turers of  thread. "^'^  Upon  the  same  principle,  if  a  manu- 
facturing or  business  establishment  has  a  firm  name 
which  it  uses  upon  its  merchandise,  it  is  no  fraud  upon 
the  public  if  the  finn  name  no  longer  represents  the 
same  individuals  that  it  did  when  first  adopted."''-* 

§  68  Revocation  of  license  to  use  one's  own  name.— 
When  a  person  has  permitted  another  to  build  up  a  busi- 
ness under  his  name,  the  license  may  become  irrevoca- 
ble. It  was  so  held  by  the  supreme  court  of  Pennsylva- 
nia, where  the  purchaser  of  the  machinery"  and  stock  of 
goods  of  an  insolvent  partnership  at  a  sheriff's  sale  was 
given  permission  to  continue  the  use  of  the  finn  name. 
A  bill  was  filed  four  years  subsequently  to  enjoin  the  pur- 
chaser from  continuing  to  use  the  name,  and  for  an  ac- 
count of  profits.  Among  other  controlling  facts,  it  ap- 
peared that  at  the  time  of  the  sheriff's  sale  the  good-will 
and  firm  name  were  valueless,  and  that  their  sole  value 
was  due  to  the  efforts  of  the  purchaser.  This  decision 
seems  to  be  sound,  and  it  is  chiefly  of  value  because  of 
the  distinction  between  the  license  here  involved,  and  the 
license  which  is  implied  in  the  case  of  the  infringer  of  a 
technical  trademark,  and  which  has  been  held  to  be  re- 
vocable at  any  time.  Mestrezat,  J.,  said  "It  is  undoubt- 
edly true  that  a  mere  license  without  consideration  is 
determinable  at  the  pleasure  of  the  licensor.  But  that  is 
not  the  rule  in  this  state,  where  the  enjoyment  of  the 
license  must  necessarily  be  and  is  preceded  by  the  expen- 
diture of  money.    In  such  cases  the  license  becomes  an 

58— Dale  v.  Smithson,  12  Abb.  -  59 — Leather  Cloth  Co.  Ltd.  v. 
Pr.  237;  Cox'  American  Trade-  American  Leather  Cloth  Co.  Ltd., 
mark  Cases,  282.  L.  R..  11  H.  L.  C.  523,  542. 


150  HOPKINS   ON   TRADEMARKS.  [§69 

agreement  on  a  valuable  consideration,  and  is  irrevoca- 
ble."«« 

§  69.  Corporate  names.— The  general  rule  governing 
the  supervision  of  equity  over  the  names  of  corporations 
has  been  comprehensively  stated  as  follows:  "In  respect 
to  corporate  names,  an  injunction  lies  to  restrain  the 
simulation  and  use  by  one  cor[3oration  of  the  name  of  a 
prior  corporation  which  tends  to  create  confusion,  and 
to  enable  the  later  corporation  to  obtain,  by  reason  of 
the  similarity  of  names,  the  business  of  the  prior  one. 
The  courts  interfere  in  these  cases,  not  on  the  ground 
that  the  state  may  affix  such  corporate  names  as  it  may 
elect  to  the  entities  it  creates,  but  to  prevent  fraud,  actual 
or  constructive.  The  names  of  coi^iorations  organized 
under  general  laws,  and  in  most  other  cases,  are  chosen 
by  the  promoters,  and  it  would  be  an  easy  way  to  escape 
from  the  obligations  which  are  enforced  as  between  in- 
dividuals if  a  cori^oration  were  granted  immunity  by  rea- 
son of  their  corporate  character. '"^^ 

Probable  confusion  of  business  is  usually  a  prominent 
factor  in  the  disposition  of  cases  of  this  class.*^^ 

The  courts  are  confused  in  their  phraseology  with  ref- 
erence  to  the  character  of  corporate  names.  There  can 
be  no  trademark  right  in  a  corporate  name,  for  the  con- 
clusive reason  that  it  is  not,  as  such,  applied  to  the  sub- 
ject-matter of  commerce.  In  an  early  case  Judge  Deady, 
of  Oregon,  said,  "The  corporate  name  of  a  corj^oration 
is  a  trademark  from  the  necessity  of  the  thing,  "*^^  and 
this  very  phrase,  with  other  dicta,  has  been  quoted  with 

60— Harris  v.  Brown,  202  Pa.  16,  Case     No.     10144,      Deady,      609. 

51  Atl.  Rep.  586.  "The  name  of  a  corporation    has 

61 — Higgins  Co.  v.  Higgins  Soap  been  said   to   be   the   'knot  of   its 

Co.,  144  N.  Y.  462,  39   N.  E.  Rep.  combination,'      without     which    it 

490,  43  Am.  St.  Rep.  769.  cannot  perform  its  corporate  func- 

62 — Drummond    Tobacco   Co.    v.  tions."     Wallace,   J.,   in   Goodyear 

Randle,  114  111.  412,  2  N.  E.  Rep.  Rubber  Co.  v.  Goodyear's  Rubber 

536.  Mfg.  Co.,  21  Fed.  Rep.  276. 

63 — Newby  v.  Railroad  Co.,  Fed. 


§  69]  WHAT    CONSTITUTES   A   VALID   TRADEMARK.  151 

approval  in  a  more  recent  case."^  The  author  has  in  a 
former  section  collected  the  judicial  definitions  of  trade- 
mark, and  it  is  a  scientific  impossibility  to  bring  Judge 
Deady's  dictum  within  the  scope  of  either  of  those  defi- 
nitions, or  to  extend  the  definitions  to  include  that  dic- 
tum. Mr.  Justice  ClifTord's  definition  may  be  referred  to 
as  making  the  author's  position  clearer."^^  It  is  entirely 
erroneous  to  treat  a  corporate  name  as  being  a  trade- 
mark. 

This  error  has  arisen  from  the  unfamiliarity  of  the 
courts  witli  the  essential  requirements  of  technical  trade- 
marks, and  the  fact  that  equitable  relief  had  to  be  admin- 
istered in  cases  where  the  courts  had  no  precedents  at 
hand  except  in  the  trademark  decisions,  which  afforded 
similar  reasoning  to  support  their  conclusions. 

The  reason  why  equity  intervenes  to  protect  corporate 
names  from  imitation  is  that  they  are  essential  parts  of 
the  being  of  corporations,  or,  as  expressed  by  the  supreme 
court  of  Missouri,  its  name  is  a  necessarj-  element  of  the 
existence  of  a  corporation."*' 

As  the  Ehode  Island  court  has  phrased  it,  "The  prin- 
ciples upon  which  these  cases  rest  are  that,  although  a 
corporation  may  be  legally  created,  it  can  no  more  use  its 
corporate  name  in  violation  of  the  rights  of  others  than 
an  individual  can  use  his  name,  legally  acquired,  so  as  to 
mislead  the  public  and  to  injure  another.""'^  The  courts, 
therefore,  will  protect  a  coi^:)oration  in  the  use  of  its 
name  in  the  absence  of  any  express  statutory  enact- 
ment.^s  The  exercise  of  this  power  is  an  enforcement  of 
the  law  of  unfair  competition  as  shoT\Ti  in  the  following 
language  of  Bradley,  J.:  ''Fair  competition  in  business 
is  legitimate,  and  promotes  the  public  good;  but  an  un- 

64— Investor  Pub.  Co.  v.  Dobin-  67— Armington  v.  Palmer,  —  R. 

son.  72  Fed.  Rep.  603.  606.  I. ,  43  L.  R.  A.  95,  42  Atl.  Rep. 

65— McLean  v.  Fleming.  96  U.  S.-  308. 

245-254.  68— Farmers'  Loan  &  Trust  Co. 

66.— State   v.   McGrath,    92    Mo.  v.   Farmers'  Ix)an  &  Trust  Co.  of 

257.  Kansas,  1  N.  Y.  Supp.  44;    William 


152  HOPKINS   ON   TRADEMARKS.  [§  69 

fair  appropriation  of  another's  business,  by  using  his 
name  or  trademark,  or  an  imitation  thereof  calculated  to 
deceive  the  public,  or  in  any  other  way,  is  justly  punish- 
able by  damages,  and  will  be  enjoined  by  a  court  of 
equity.'"'^  This  dictum  is  contained  in  the  opinion  in 
the  Celluloid  case,  where  the  corporate  name  happened 
to  be  the  trademark  applied  by  the  corporation  to  mer- 
chandise manufactured  and  sold  by  it.  It  is  a  self-evi- 
dent j^roposition  that  a  generic  word  embodied  in  a  cor- 
porate name  is  not  entitled  to  protection  in  equity.  The 
rule  was  thus  stated  by  Mr.  Justice  Field,  in  delivering 
the  opinion  of  the  United  States  supreme  court  in  a  case 
where  the  Goodyear  Eubber  Co.  sought  to  restrain  an- 
other corporation  from  using  the  name  "  Goodyear 's 
Rubber  Manufacturing  Co."  He  said:  ''The  name  of 
*  Goodyear  Eubber  Company'  is  not  one  capable  of  ex- 
clusive appropriation.  'Goodyear  Rubber'  are  terms  de- 
scriptive of  well-known  classes  of  goods  produced  by  the 
process  known  as  Goodyear 's  invention.  Names  which 
are  thus  descriptive  of  a  class  of  goods  cannot  be  exclu- 
sively appropriated  by  any  one.  The  addition  of  the 
word  'Company'  only  indicates  that  parties  have  formed 
an  association  or  partnership  to  deal  in  such  goods, 
either  to  produce  or  to  sell  them.  Thus  parties  united  to 
produce  or  sell  wine,  or  to  raise  cotton  or  grain,  might 
style  themselves  wine  company,  cotton  company,  or  grain 
company;  but  by  such  description  they  would  in  no  re- 
spect impair  the  equal  right  of  others  engaged  in  similar 
business  to  use  similar  designations,  for  the  obvious  rea- 
son that  all  persons  have  a  right  to  deal  in  such  articles 
and  to  publish  the  fact  to  the  world.  Names  of  such  ar- 
ticles cannot  be  adopted  as  trademarks,  and  be  thereby 
appropriated  to  the  exclusive  right  of  any  one,  nor  will 

Kogers  Mfg.  Co.  v.  Rogers  &  Spurr  Industrial   Mutual   Deposit   Co.   v. 

Mfg.  Co.,  11  Fed.  Rep.  495;  Cellu-  Central   Mutual    Deposit    Co.,    — 

loid  Mfg.  Co.  V.  Cellonite  Mfg.  Co.,     Ky. ,  66  S.  W.  Rep.  1032. 

32  Fed.    Rep.    94;     Investor  Pub.  69 — Celluloid  Mfg.  Co.  v.  Cellon- 

Co.  V.  Dobinson,  72  Fed.  Rep.  603;  ite  Mfg.  Co.,  32  Fed.  Rep.  94. 


§69] 


WHAT    CONSTITUTES   A   VALID   TRz\DEMARK. 


153 


the  incorporation  of  a  company  in  the  name  of  an  article 
of  commerce,  without  other  specification,  create  any  ex- 
clusive right  to  the  use  of  the  name. '  '^"^ 

In  his  latest  utterance  upon  this  subject,  the  United 
States  Supreme  Court  speaking  through  Mr.  Chief  Jus- 
tice Fuller  says  *'the  principle  that  one  coii:)oration  is 
not  entitled  to  restrain  another  from  using  in  its  corpo- 
rate title  a  name  to  which  others  have  a  common  right, 
is  sustained  by  the  discussion  in  Columbia  Mill  Co.  v.  Al- 


io— Mr.  Justice  Field,  in  Good- 
year Co.  V.  Goodyear  Rubber  Co., 
128  U.  S.  598-602;    reversing  s.  c, 
21  Fed.  Rep.  276.     Thus  in  an  ac- 
tion   by   one    fire    insurance    com- 
pany to  restrain  another  from  the 
use  of  the  word  "Continental"  in 
Its  corporate  name,  the  court  said: 
"The  distinguishing  feature  of  the 
names    of     the     two    incorporated 
companies   is  the  word  'Continen- 
tal.'    It   is   the   use   of   this   word 
hy  the  defendant  which  the  com- 
plainant seeks  to  enjoin.    It  is  the 
contention    of     the     complainant 
that,  by  reason  of  the  long-contin- 
ued use  of  this  word  by  it,  and  the 
fact  that  it  has  built  up  a   large 
and  lucrative  business  under  this 
distinguishing    name,     it    has    se- 
cured   a    property    right    in   said 
word  'Continental,'    in    connection 
with  its  incorporated  name,  and  it 
is  entitled  to  the  exclusive  use  of 
the   word  'Continental,'  in  connec- 
tion  with   its   insurance   business, 
in   the    sections    of    the    country 
where  it  is  engaged  in  such  busi- 
ness.   Upon  the  showing  made  by 
the  complainant,   it  might  be  en- 
titled to  the  relief  sought,  were  the 
distinguishing  word   of  its   corpo- 
rate name  such  a  one  as  could  be 


exclusively  appropriated  in  the 
designation  or  conduct  of  a  busi- 
ness by  a  person,  firm  or  corpora- 
tion. The  word  'continental'  is  in 
general  and  prevalent  use,  and 
means  pertaining  to  or  character- 
istic of  a  continent.  As  applied  to 
or  designating  an  insurance  com- 
pany, it  would  be  descriptive  of 
the  bounds  within  which  such 
company  carried  on  its  business. 
The  scope  of  the  business  carried 
on  by  many  insurance  companies 
is  continental  in  extent.  A  term 
which  can  be  truthfully  used  by 
many  in  the  description  of  a  busi- 
ness or  occupation  cannot  be  ex- 
clusively appropriated  by  any  one 
of  them.  The  word  'continental' 
is  a  generic  term,  and  it  is  not  the 
policy  of  the  law  to  permit  the  ex- 
clusive appropriation  of  words  or 
terms  which  are  generic;  that  is, 
which  pertain  to  a  class  of  related 
things,  and  which  are  of  general 
application.  The  right  to  use  such 
words  should  remain  vested  in  the 
public."  Meek,  J.,  in  Continental 
Ins.  Co.  V.  Continental  Fire  Ass'n^ 
96  Fed.  Rep.  846-848;  affirmed,  41 
C.  C.  A.  326,  101  Fed.  Rep.  255. 
To  the  same  effect  see  Goodyear 
Rubber  Co.  v.  Day,  22  Fed.  Rep.  44. 


154  HOPKINS   ON   TRADEMAKKS.  [§  69 

corn-  (150  U.  S.  460),  and  is,  we  think,  necessarily  appli- 
cable to  all  names  publici  juris."'^^ 

A  foreigTi  coiporation  cannot,  by  application  to  a  court 
in  the  state  in  which  a  new  corporation  is  being  organ- 
ized, secure  an  injunction  restraining  the  fonnation  of 
the  new  corporation  under  the  same  corporate  name  as 
that  of  the  plaintiff.  But  in  dismissing  a  bill  brought  for 
such  a  puii^ose,  Judge  Gresham  said:  ''I  do  not  say  what 
may  be  done  if  the  defendants  succeed  in  creating  their 
corporation  bearing  the  complainant's  name,  and  a  suit 
shall  be  brought  by  the  complainant  to  prevent  individ- 
uals claiming  to  be  officers  or  managers  of  such  corpora- 
tion from  interfering  with  the  complainant's  business. "^^ 

In  conclusion,  there  is  no  practical  difference,  so  far 
as  equitable  rights  and  remedies  are  concerned,  between 
corporate  names  and  the  name  of  a  copartnership  or  an 
individual.  As  said  by  Mr.  Justice  Bradley,  on  circuit, 
in  dealing  with  the  names  of  corporations  plaintiff  and 
defendant,  ''the  fact  that  both  are  corporate  names  is  of 
no  consequence  in  this  connection.  They  are  the  busi- 
ness names  by  which  the  parties  are  known,  and  are  to  be 
dealt  with  jDrecisely  as  if  they  were  the  names  of  private 
firms  or  partnerships."^^ 

And  in  a  similar  case,  the  Supreme  Court  of  Illinois 
has  said,  ''Even  if  the  corporate  namxcs  of  the  two  cor- 
porations are  somewhat  similar,  yet,  in  the  absence  of  any 
intent,  act,  or  artifice  to  mislead  dealers  in  the  market  or 
the  public  at  large  as  to  the  identity  of  the  corporations, 

71— Howe  Scale  Co.  v.  Wyckoff  72— Lehigh    Valley    Coal   Co.   v. 

Seamans  &  Benedict,  198  U.  S.  118;  Hamblen,  23  Fed.  Rep.  225,  226. 

citing  American  Cereal  Co.  v.  Eli  73 — Celluloid  Mfg.  Co.  v.  Cellon- 

Pettijohn  Cereal  Co.  72  Fed.  Rep  ite  Mfg.  Co.,  32  Fed.  Rep.  94-97.    To 

903;     76  Fed.  Rep.  372;    Hazelton  the    same    effect,     see     Baker    v. 

Boiler     Co.     v.     Hazelton     Tripod  Baker,   53   C.   C.   A.   157,   115   Fed. 

Boiler  Co.,  142  111.  494;     Monarch  Rep.     297;      Howe     Scale    Co.    v. 

V   Rosenfeld,  19  Ky.  Law  Rep.  14,  Wyckoff,  Seamans  &  Benedict,  198 

39  S.  W.  Rep.  236.  U.    S.  118. 


§  69  J  WHAT    CONSTITUTES   A    VALID   TU.VDEMARK.  155 

the  Elgin  Creamer}-  Company  has  the  same  right  to  use 
its  corjoorate  name  in  the  transaction  of  its  business  that 
the  Elgin  Butter  Company  has  to  use  its  corporate  name. 
It  would  seem  that  tlie  same  rule  should  apply  to  corpo- 
rations in  this  regard  that  obtaijis  in  respect  to  natural 
persons;  and,  in  the  absence  of  any  fraudulent  intention 
or  act,  or  any  contract  to  prohibit  it,  every  natural  per- 
son has  the  absolute  right  to  his  own  name  in  his  own 
business. '  '^^ 

As  to  the  use  of  a  proper  name  of  an  incorporator  as 
part  of  the  corporate  name.  Judge  Lochren  has  stated 
the  rule  as  follows:  ''While  any  person  has  the  right  to 
use  his  own  name  in  the  conduct  of  his  business,  in  de- 
scribing the  articles  of  his  manufacture,  and  which  he  is 
dealing  in,  he  has  not  the  right  to  use  the  name  of  any 
other  dealer;  and  it  is  well  settled  by  the  authorities  that 
a  corporation  has  not  the  right  to  use  the  name  of  one 
of  its  incorporators  for  the  purpose  of  unfair  competi- 
tion with  an  older  dealer,  where  it  is  likely  to  do  him  in- 
jury, and  that  it  will  not  be  permitted  to  use  that  name 
if  it  is  the  name  by  which  the  older  article  is  usually 
called  for  and  described.  "^^ 

A  corporation  cannot,  by  securing  a  license  from  or 
employing  a  person  bearing  the  desired  proper  name,  so 
use  that  name  as  part  of  its  corporate  name  as  to  main- 
tain an  unfair  competition  with  an  older  business  em- 
ploying the  name.'^" 

Under  a  penal  statute  of  Illinois  providing  a  punish- 
ment for  any  person,  company  or  associalion  not  incor- 
porated, assuming  "a  corporate  name,"  relief  in  equity 
has  been  denied  individuals  doing  business  as  "Aetna 


74— Baker,  J.     in    Elgin  Butter  Tliread   Co.,  135    Fed.    Rep.,    1^7, 

Co.  V.  Elgin  Creamery  Co.,  155  111.  179. 
1:^7;     40  N.  E.  Rep.  616.  76— Garrett  v.   T.    H.   Garrett   & 

75— J.  &  P.  Coats  V.  John  Coates  Co.,  78  Fed.  Rep.  472,  24  C.  C.  A.  173. 


156  HOPKINS   ON   TRADEMARKS.  [§  70 

Iron  Works. ' '" '  And  in  another  instance  it  has  been  held 
that  individuals  doing  business  as  ''Hazleton  Boiler 
Company"  could  not  convey  the  right  to  use  said  name."^^ 
In  the  former  case,  the  rule  is  broadly  laid  down  that,  in 
that  state  a  copartnership  can  have  no  property  in  a  name 
importing  a  corporation. 

In  the  latter  case,  it  was  held  by  the  Supreme  Court  of 
Illinois  that  a  foreign  corporation  had  no  standing  in 
the  courts  of  Illinois  to  contest  the  right  of  an  Illinois 
corporation  to  use  the  same  name.  Judge  Jenkins  has 
remarked  that  this  holding  ''is  not  in  accord  with  the 
decisions  of  the  federal  and  of  other  state  courts.  "'^^ 

§70.  "Secondary  meaning"  defined.— Of  late  years 
the  expression  ''secondary  meaning"  has  been  fre- 
quently employed  in  opinions  in  cases  of  unfair  compe- 
tition. The  expression  has  come  to  indicate  a  meaning 
that  may  be  ' '  secondary ' '  either  in  point  of  intent,  or  in 
point  of  time. 

Thus,  in  a  leading  English  case,  Lord  Macnaghten 
said: 

"The  appellants  concede— they  cannot,  indeed,  any 
longer  dispute— that  everybody  who  makes  belting  of 
camel  hair,  is  entitled  to  describe  his  belting  as  "Camel- 
hair  Belting,'  provided  he  does  so  fairly.  But  they  con- 
tend, and  I  think  with  reason,  that  neither  Banham  nor 
anybody  else  is  entitled  to  steal  Reddaway's  trade  under 
color  of  imparting  accurate  and  possibly  interesting  in- 
formation.   Practically  the  only  difference  which  the  un- 

77— Clark  v.  Aetna  Iron  Works,  Mfg.  Co.,  17  C.  C.  A.  576,  70  Fed. 

44  111.  App.  510.  Rep.  1017;    Publishing  Co.  v.  Dob- 

78— Hazelton   Boiler   Co.  v.   Ha-  binson,  72  Fed.  Rep.  603;    Higgins 

zelton  Tripod  Boiler  Co.,    142   111.  Co.  v.  Hipgins  Soap  Co.,  144  N.  Y. 

494;    30  N.  E.  Rep.  339.  462,  39  N.  E.  Rep.  490,  27  L.  R.  A. 

79— The  Peck  Bros.  &  Co.  V.  Peck  42,  43  Am.  St.  Rep.  769;    Holmes, 

Bros.  Co.,  51  C.  C.  A.  251,  113  Fed.  Booth  &  Hayden  v.  Holmes,  Booth 

Rep.    291,    302;      citing    Celluloid  &  Atwood  Mfg.  Co.,  37  Conn.  278, 

Mfg.  Co.  V.  Cellonite  Mfg.  Co.,  32  293,  9  Am.  Rep.  324. 
Fed.  Rep.  94;  Rogers  Co.  v.  Rogers 


§  70]  WUAT    CONSTITUTES   A   VALID   TR.VDEMARK.  137 

expected  turn  in  the  evidence  has  made  is  this:  the  case 
now  comes  under  the  second  branch  oi'  the  proposition 
laid  down  by  Lord  Justice  James;  if  'Camel-hair  Belting' 
liad  kept  its  place  as  a  fanciful  tenn,  it  would  have  fallen 
under  the  first.  The  learned  counsel  for  the  respondents 
maintained  that  the  expression  'Camel-IIair  Belting,' 
used  by  Banliam,  was  the  '  simple  truth. '  Their  proposi- 
tion was  that,  'where  a  man  is  simply  telling  the 
truth  as  to  the  way  in  which  his  goods  are  made,  or  as 
to  the  materials  of  which  they  are  composed,  he  cannot 
be  held  liable  for  mistakes  which  the  public  may  make.' 
That  seems  to  me  to  be  rather  begging  the  question.  Can 
it  be  said  that  the  description  'Camel-Hair  Belting,'  as 
used  by  Baiiham,  is  the  simple  truth?  I  will  not  call  it 
an  abuse  of  language  to  say  so,  but  certainly  it  is  not 
altogether  a  happy  expression.  The  whole  merit  of  that 
description— its  one  virtue  for  Banham's  purposes— lies 
in  its  duplicity.  It  means  two  things.  At  Banham's 
works,  where  it  cannot  mean  Keddaway's  belting,  it 
may  be  construed  to  mean  belting  made  of  cam- 
el's hair.  Abroad,  to  the  Gemian  manufacturer,  to  the 
Bombay  mill  owner,  to  the  up-country  native,  it  must 
mean  Redda way's  belting;  it  can  mean  nothing  else.  I 
venture  to  think  that  a  statement  which  is  literally  true, 
but  which  is  intended  to  convey  a  false  impression,  has 
something  of  a  faulty  ring  about  it ;  it  is  not  sterling  coin ; 
it  has  no  right  to  the  genuine  stamp  and  impress  of 
truth.  "80 

Here,  both  in  point  of  time  and  point  of  intent, ' '  Camel- 
Hair"  meant  primarily  belting  having  camel's  hair  as  a 
component. 

Where  the  mark  in  its  first  application  is  a  valid  trade- 
mark, "the  mere  fact  that  the  article  has  obtained  such 
a  wide  sale  that  the  mark  has  also  become  indicative  of 
quality  is  not  of  itself  sufficient  to  debar  the  owner  of 

80— Reddaway  V.  Banham  (1896),  App.  Cas.  199. 


158  HOPKINS   ON   TRADEMARKS.  [§  70 

protection  or  make  it  the  common  proj)erty  of  the 
trade.  "«i 

Where,  on  the  other  hand,  the  mark  in  the  first  instance 
is  generic,  because  merely  descriptive  or  geographical, 
or  the  name  of  a  j^erson,  and  under  that  mark  a  particular 
trader  has  occupied  the  market,  a  subsequent  invasion  of 
the  market  by  another  using  the  mark  may  (though  it 
does  not  necessarily)  constitute  unfair  competition;  but 
no  matter  how  long  the  use  continues,  the  mark  will  never 
become  a  technical  trademark.^- 

The  iTile  has  been  frequently  applied  and  illustrated. 
It  has  been  admirably  stated  by  Judge  Lurton  in  the  fol- 
lowing terms: 

"That  a  descriptive  word  or  sign  or  symbol,  descrip- 
tive from  popular  use  in  a  descriptive  sense,  may  acquire 
a  secondary-  significance  denoting  origin  or  ownershii^,  is 
true.  But  this  secondary  significance  is  not  protected  as 
a  trademark,  for  a  descriptive  word  is  not  the  subject  of 
a  valid  trademark;  the  only  office  of  a  trademark  being 
to  indicate  origin  or  ownership.  When  a  descriptive  or 
geographical  word  or  symbol  comes  by  adoption  to  have 
a  secondary  meaning  denoting  origin,  its  use  in  this  sec- 
ondary sense  may  be  restrained,  if  it  amounts  to  unfair 
competition.  In  such  case,  if  the  use  of  it  by  another  be 
for  the  purpose  of  palming  off  the  goods  of  one  as  and 
for  the  goods  of  another,  a  court  of  equity  will  interfere 
for  the  purpose  of  preventing  such  a  fraud.  But  this  kind 
of  relief  depends  upon  the  facts  of  each  case,  and  does 
not  at  all  come  under  the  rules  applicable  to  the  infringe- 
ment of  a  trademark.  "^^ 

As  to  the  secondary  meaning  of  geographical  names, 

81 — Brown,     J.,     in     Burton     v.  puting  Scale  Co.,  55  C.  C.  A.  459, 

Stratton,  12  Fed.  Rep.  696,  702.  118  Fed.  Rep.  965,  968. 

82 — Brennan    v.    Emery  -  Bird  -  83 — Vacum  Oil  Co.  v.  Climax  Re- 

Thayer  Dry-goods  Co.,  47   C.  C.  A.  fining  Co.,  56  C.  C.  A.  90,  120  Fed. 

562,  108  Fed.  Rep.  624,  627;   Com-  Rep.  254,  256. 
puling  Scale  Co.  v.  Standard  Com- 


§  71]  WHAT    CONSTITUTES   A    V.UJD   TKADEMARK.  159 

Mr.  Justice  Brown  has  said,  "geographical  names  often 
acquire  a  secondary  significance  indicative  not  only  of 
the  place  of  manufacture  or  production,  but  of  the  name 
of  the  manufacturer  or  producer  and  the  excellence  of 
the  thing  manufactured  or  produced,  which  enables  the 
owner  to  assert  an  exclusive  right  to  such  name  as  against 
every  one  not  doing  business  within  the  same  geograph- 
ical limits;  and  even  as  against  them,  if  the  name  be  used 
fraudulently  for  the  purpose  of  misleading  buyers  as  to 
the  actual  origin  of  the  thing  produced,  or  of  passing  off 
the  productions  of  one  person  as  those  of  another.  "^^ 

The  general  doctrine  has  been  stated  with  admirable 
conciseness  by  Judge  Lurton,  as  follows:  ''When  the 
word  is  incapable  of  becoming  a  valid  trademark,  because 
descriptive  or  geographical,  yet  has  by  use  come  to  stand 
for  a  particular  maker  or  vendor,  its  use  by  another  in 
this  secondary  sense  will  be  restrained  as  unfair  and 
fraudulent  competition,  and  its  use  in  its  primary  or 
common  sense  confined  in  such  a  way  as  will  prevent  a 
probable  deceit  by  enabling  one  maker  or  vendor  to  sell 
his  article  as  the  product  of  another.  "^•'^ 

§  71.  Words  of  double  meajiing.— In  connection  with 
the  subject  of  "secondary"  meanings,  we  may  con- 
sider, briefly,  the  decisions  concerning  the  appropriation 
to  trade  uses  of  the  class  of  words  having  double  mean- 


84— La  Republique  Francaise  v.  549,  11  Sup.  Ct.  396,  34  L.  ed.  997; 

Saratoga  Vichy  Spring  Co.,  191  U.  Chemical   Co.  v.   Meyer,  139   U.   S. 

S.  427.  435,  48  L.  ed.  247,  252.    To  540,  11  Sup.  Ct.  G25,  35  L.  ed.  247; 

the  same  effect  see  Elgin  National  Mill  Co.  v.  Alcorn,  150  U.  S.  460, 

Watch   Co.   V.   Loveland,    132   Fed.  14    Sup.   Ct.    151,    37    L.    ed.    1144; 

Rep.    41,    47;    American  Waltham  Singer  Mfg.  Co.  v.  June  Mfg.  Co., 

Watch  Co.  V.  United  States  Watch  163  U.  S.  169,  16  Sup.  Ct.  1002,  41 

Co..  173  Mass.  85,  53  N.  E.  Rep.  141.  L.  ed.  118;    Elgin  Nat.  Watch  Co. 

85 — Computing      Scale     Co.     v.  v.  Illinois  W'atch  Case  Co.,  179  U. 

Standard  Computing  Scale  Co.,  55  S.   665,  21   Sup.  Ct.   270,  45  L.  ed. 

C.    C.   A.    459,   lis   Fed.    Rep.   965,  365;    Bennett  v.  McKinley,  13  C.  C. 

967.     Citing  Lawrence  Mfg.   Co.  v.  A.  25,  65  Fed.  Rep.  505. 
Tennessee  Mfg.  Co.,  138  U.  S.  537, 


160  HOPKINS   ON   TR^U>EMARKS.  [§  71 

iugs,  being  in  one  sense  arbitran'^  and  in  another  descrip- 
tive. 

A  careful  search  of  the  decisions  involving  words  of 
this  character  fails  to  disclose  a  clearer  statement  of  the 
coiTect  iTile  than  is  embodied  in  the  following  language 
of  Judge  Wallace:  ''No  principle  of  the  law  of  trade- 
mark is  more  familiar  than  that  wliich  denies  protection 
to  any  woi'd  or  name  which  is  descriptive  of  the  qualities, 
ingredients,  or  characteristics  of  the  article  to  which  it 
is  applied.  An  exclusive  right  to  the  use  of  such  a  word, 
as  a  trademark,  when  applied  to  a  particular  article  or 
class  of  articles,  cannot  be  acquired  by  the  prior  appro- 
priation of  it,  because  all  persons  who  are  entitled  to 
produce  and  vend  similar  articles  are  entitled  to  describe 
them,  and  to  employ  any  appropriate  terms  for  that  pur- 
pose. Whether  a  word  claimed  as  a  trademark  is  avail- 
able because  it  is  a  fanciful  or  arbitrary  name,  or  whether 
it  is  obnoxious  to  the  objection  of  being  descriptive,  must 
depend  upon  the  circumstances  of  each  case.  The  word 
which  would  be  fanciful  or  arbitrary  when  applied  to 
one  article  may  be  descriptive  when  applied  to  another. 
If  it  is  so  apt,  and  legitimately  significant  of  some  quality 
of  the  article  to  which  it  is  sought  to  be  applied,  that 
its  exclusive  concession  to  one  person  would  tend  to  re- 
strict others  from  properly  describing  their  own  similar 
articles,  it  cannot  be  the  subject  of  a  monopoly.  On  the 
otlier  hand,  if  it  is  merely  suggestive,  or  is  figurative 
only,  it  may  be  a  good  trademark,  notwithstanding  it  is 
also  indirectly  or  remotely  descriptive."^^ 

In  the  opinion  quoted  from,  the  word  ''instantaneous" 
was  held  to  be  aptly  descriptive  of  one  of  the  qualities 
of  the  goods  to  which  it  was  ajjplied.  In  a  later  case  it 
has  been  held  that  the  words  ' '  Queen, "  or  "  Queen  Qual- 
ity," as  applied  to  shoes,  are  not  so  descriptive  as  to  pre- 
clude their  exclusive  appropriation  as  a  "tradename," 

86— Bennett  v.   McKinley,   13   C.  C.  A.  25,  65  Fed.  Rep.  505,  506, 


§  71]  WHAT    CONSTITUTES   A    VALID   TRADEMARK,  IGl 

Judge    Severens    apparently    using    tlie    word    ** trade- 
name" as  synonymous  witli  "trademark."®^ 

"It  has  been  repeatedly  ruled  that  a  word  which  sug- 
gests even  the  composition,  quality,  or  characteristics  of 
an  article  to  which  it  is  applied  may  yet  be  a  good  trade- 
mark."«« 

87 — Thomas  G.  Plant  Co.  v.  May  &  Woerz  v.  Cooke  Brewing  Co.,  20 

Co.,  44  C.  C.  A.  534,  105  Fed.  Rep.  C.  C.  A.  405.  74  Fed.  Rep.  229.  234. 

375,  379.  citing  Keasbey  v.  Chemical  Works, 

88— Showalter,  J.,  in  Beadleston  142  N.  Y.  467,  37  N.  E.  Rep.  476. 


11' 


CHAPTER  IV. 

TRADEMARK    RIGHTS    IN    TITLES     OF    BOOKS,    PERIODICALS 

AND    PLAYS. 

§  72.  Trademark  in  title  of  a  book.— Upon  this  subject 
there  has  been  less  harmony  of  opinion  than  would  be 
expected.  It  has  been  said  by  the  court  of  appeals  of 
Maryland  that  *'A  publisher  has  either  in  the  title  of  his 
wOTk  or  in  the  application  of  his  name  to  the  work,  or  in 
the  particular  marks  which  designate  it,  a  species  of 
property  similar  to  that  which  a  trader  has  in  his  trade- 
mark. '  '^ 

Mr.  Browne  in  his  learned  treatise  on  trademarks  says: 
''Can  printed  books  be  protected  by  trademarks?  Yes, 
as  mere  merchandise ;  no,  as  literary  productions. '  '^  This 
is  true,  in  so  far  as  it  asserts  that  marks  or  devices  may 
be  used  to  distinguish  the  product  of  the  publisher  or 
book  dealer.'^  He  says  further:  "There  seems  to  be  no 
sufficient  reason  why  the  title  of  a  book  may  not  be 
deemed  a  valid  trademark,"^  and  thereby  expresses  the 
error  contained  in  the  careless  dictum  of  the  Marj^land 
court  quoted  above.  The  correct  view  is  stated  in  clear 
terms  by  Mr.  Rowland  Cox,  in  his  note  to  Clemens  v.  Bel- 
ford:^  ''It  is  necessarily  true  that  the  name  of  a  book  is, 
under  all  circumstances,  a  descriptive  term  which  means 
a  particular  thing.  The  book  is  created  and  given  a 
name,  and  the  name  is  added  to  the  language  as  a  term 

l_Robertson  v.    Berry,    50   Md.  related   to    property    right   in   the 

591;     Price  &  Steuart,  153.  title  of  a  periodical  publication, 

2_Browne,  Trademarks,  sec.  116.  4— Browne,  Trademarks,  sec.  118. 

3— Mr.  Browne  cites  six  cases  in  5—14  Fed.  Rep.  728;    Cox,  Man- 
support  of  this  proposition,  neither  ual,  685. 
one  of  which   is   applicable.     All 

162 


§  72]  BOOK   TITLES  AS  TRADEM.VRKS.  163 

of  description.  If  a  copyright  is  taken,  the  owner  of  the 
copyright  enjoys,  as  long  as  the  privilege  continues,  the 
exclusive  right  to  the  use  of  the  name;  and  when  the 
privilege  expires,  the  name,  always  a  descriptive  term, 
becomes  puhlici  juris.  If  the  hook  is  not  copyrighted, 
the  literary  matter  becomes  puhlici  juris  as  soon  as  it  is 
published,  and  the  name  of  the  literary  matter  goes  to 
the  public  as  an  incident  of  that  which  it  describes.  If 
there  is  language  in  some  of  the  cases  which  seems  to 
indicate  that  the  name  of  a  book  can  be  protected  as  a 
trademark,  reflection  will  demonstrate  that  it  cannot  be 
made  good.  The  names  of  periodicals  and  newspapers, 
as  distinguished  from  books,  are  protected  as  in  the 
nature  of  trademarks;  and  in  many  instances  the  publi- 
cations in  connection  with  which  the  names  have  been 
used  were  proper  subjects  of  copyright.  In  some  cases 
they  contained,  or  might  have  contained,  articles  in  con- 
nection with  which  the  statutory  privilege  had  been  ac- 
quired. But  the  name  which  has  been  protected  has  never 
been  simply  the  name  of  a  book,  but  always  that  of  a 
constantly  changing  series.  Thus  the  term  *01d  Sleuth 
Library'  was  distinctly  arbitrary,  and  never  the  name 
of  a  particular  book  or  literary  production,  and  for  this 
reason  it  was  in  an  accurate  sense  a  trademark,  and 
must  continue  to  be  as  long  as  the  publication  was  con- 
tinued. But  if  the  publication  of  the  periodical  were 
discontinued  for  a  period  of  years,  the  name  would 
cease  to  be  arbitrary  and  take  its  place  in  literature 
as  indicating  a  definite  collection  of  articles,  pictures, 
etc.,  and  as  soon  as  it  acquired  that  settled  meaning,  it 
would,  in  the  absence  of  copyright,  become  puhlici 
juris." 

It  is  now  established  law  that  there  is  no  trademark 
right  in  the  title  of  a  book.  Judge  Wallace  stated  the 
rule  very  lucidly  when  he  said;  ''Neither  the  author 
or  proprietor  of  a  literary  work  has  any  property  in  its 
name.     It   is   a   term   of   description,   which   senses   to 


164  HOPKINS   ON   TRADEMARKS.  [§  73 

identify  the  work;  but  any  other  person  can  with  im- 
punity adopt  it,  and  apply  it  to  any  other  book,  or  to 
any  trade  commodity,  provided  he  does  not  use  it  as 
a  false  token  to  induce  the  public  to  believe  that  the 
thing  to  which  it  is  applied  is  the  identical  thing  which 
it  originally  designated.  If  literary  property  could  be 
protected  upon  the  theory  that  the  name  by  which  it 
is  christened  is  equivalent  to  a  trademark,  there  would 
be  no  necessity  for  copyright  laws.'"^  This  dictriue  is 
fully  sustained  by  the  later  cases."^ 

§  73.  Trademark  in  title  of  periodical.— In  1859  Vice- 
Chancellor  Stuart  enjoined  a  defendant  who  had  begun 
the  jDublication  of  ''The  Penny  Bell's  Life  and  Sporting 
News"  from  publishing  any  newspaper  under  that 
name,  or  any  other  name  in  which  the  words  ''Bell's 
Life"  should  occur,  the  application  being  made  by  the 
proprietors  of  "Bell's  Life  in  London."  In  the  course 
of  his  opinion  the  vice-chancellor  said:  "This  is  an 
application  in  support  of  the  right  to  property."^  Thus 
was  distinctly  recognized  the  right  of  trademark  in  the 
title  of  a  periodical  publication.  Long  prior  to  this 
time,  however,  equity  had  suppressed  this  species  of 
piracy  between  publishers,  the  first  reported  case  being 
that  of  Hogg  v.  Kirhy,  where  the  complainant  was  the 
proprietor  of  a  magazine  called  "The  Wonderful  Maga- 
zine" and  the  defendant's  publication  bore  substan- 
tially the  same  name  with  the  addition  of  the  words 
"New  Series,  Improved."  The  injunction  was  granted 
by  Lord  Eldon.» 

6 — Black  V.  Ehrich,  44  Fed.  Rep.  49    Fed.     Rep.     944      (opinion    by 

793,  794.  Judge   Shipman) ;     Kipling    v.    G. 

7 — Merriam    v.     Holloway    Pub.  P.   Putnam's    Sons,    120   Fed.    Rej). 

Co.,  43  Fed.  Rep.  450   (opinion  by  631,  57  C.  C.  A.  295. 
Mr.    Justice     Miller    on    circuit) ;         8 — Clement  v.  Maddick,    1    Giff. 

Merriam    v.     Famous     Shoe     and  98;     5   Jur.   N.   S.   592;     33  L.   T. 

Clothing    Co.,    47    Fed.    Rep.    411  117;    Seb.  174. 
(opinion  by  Judge  Thayer);   Mer-        9 — Hogg   v.   Kirby,   8   Yes.   215; 

riam  v.  Texas   Sittings  Pub.   Cc,  Seb.     10.     Lord     Eldon     also     re- 


§  73]  BOOK   TITLES   AS  TRADEMARKS.  165 

In  the  United  States  Chancellor  Sandford  was  the 
first  to  recognize  this  right,  in  1825,  although  he  re- 
fused to  enjoin  the  use  of  the  title  "The  New  York  Na- 
tional Advocate"  on  the  application  of  the  proprietor  of 
*'Tlie  National  Advocate,"  both  names  being  applied 
to  newspapers  published  in  the  city  of  New  York,  hold- 
ing the  names  to  be  substantially  different;  and  this 
notwithstanding  the  fact  that  the  defendant  had  been 
the  editor  for  the  publisher  who  had  sold  "The  Na- 
tional Advocate"  to  the  complainant.  Tlie  chancellor 
did  not  exjDressly  hold  the  title  of  the  paper  to  be  a 
trademark,  but  treated  it  as  part  of  the  good-will  of  the 
printing  establishment.^ '^  Indeed  he  seems  to  have 
treated  the  subject  solely  from  the  standpoint  of  unfair 
competition,  ignoring  the  question  of  technical  prop- 
erty right,  as  did  Chancellor  AYalworth  in  1840  in  refus- 
ing to  enjoin  the  use  of  the  title  "New  Era"  on  the 
application  of  complainants  who  published  the  "Demo- 
cratic Republican  New  Era,"  saying  inter  alia,  "There 
could  be  very  little  excuse  for  the  editor  of  a  new  paper 
who  should  adopt  the  precise  name  and  dress  of  an  old 
established  paper,  which  would  be  likely  to  interfere 
with  the  good-will  of  the  latter  by  actually  deceiving 
its  patrons.  "^^ 

In  1867,  however,  a  clear  cut  opinion  of  the  court  of 
common  pleas  of  the  city  of  New  Y^ork  recognized  the 
property  Tight  in  unmistalvable  tenns.  The  plaintiffs, 
proprietors  of  the  "National  Police  Gazette,"  applied 
for  an  injunction  to  restrain  the  publication  of  the 
"United  States  Police  Gazette"  by  the  defendants. 
Brady,  J.,  said:    "The  title  of  a  newspaper  may  be  a 

strained  a  defendant  from  the  pub-  10 — Snowden  v.  Noah,  Hopkins, 

lication  of  a  court  calendar  which  Ch.  R.  347;    Cox,  1;    Seb.  41. 

he  was  issuing  as  a  continuation  11 — Bell  v.   Locke,   8  Paige,  75; 

of  the  complainant's  work.     Long-  Cox,  11;     Seb.  65. 

man   v.   Winchester,   16   Ves.   269; 

Seb.  15. 


166  HOPKINS   ON   TRADEMARKS.  [§  '^3 

purely  original  one,  and  the  proprietor  for  that  reason, 
entitled  to  its  exclusive  use.  He  may  create  a  word, 
or  combination  of  words,  for  the  particular  designation 
of  his  paper,  and  in  that  way  acquire  an  exclusive  right 
to  the  use  of  the  name  employed.  He  may  combine, 
as  the  plaintiffs  have,  well-known  English  words  m 
common  use.  ...  It  also  appears  that  the  plain- 
tiffs' paper  has  been  published  weekly  under  that  name 
for  many  years,  .  .  .  that  its  circulation  is  large 
and  valuable,  and  that  it  was  the  only  police  gazette,  eo 
nomine,  published  in  the  United  States  at  the  time  of 
the  publication  of  the  paper  complained  of  by  them. 
.  .  .  From  these  facts  it  is  apparent  that  the  plain- 
tiffs have  acquired  a  right  connected  with  the  publica- 
tion of  a  newspaper  called  the  National  Police  Gazette, 
which  must  be  preserved  against  any  fraud  attempted 
to  be  perpetrated  against  them."^^ 

In  1870,  in  the  Philadelphia  court  of  common  pleas. 
Judge  Paxson  said,  ''the  name  of  a  newspaper  is  a 
trademark.  As  much  so  as  a  label  stamped  upon  a 
bale  of  muslin.  "^^  But  this  was  mere  obiter  dictum,  as 
the  learned  court  was  dealing  with  the  mark  and  dress 
of  a  stove  polish. 

Subsequently  the  superior  court  of  New  York  City, 
per  Monell,  J.,  said:  "I  do  not  understand  that  the 
protection  which  the  law  affords  to  'trademarks,'  even 
assuming  the  name  of  a  newspaper  to  be  a  trademark, 
goes  so  far  as  is  claimed  in  this  case.  The  protection 
which  has  been  granted  to  that  species  of  property  has 
never,  I  believe,  been  extended  over  anything  that  was 
the  subject  of  a  patent  or  a  copyright,  but  is  confined 
to  appropriations  of  names  designating  some  particular 
manufacture  or  business.  There  can  be  no  such  prop- 
erty in  a  newspaper  except,  perhaps,  in  the  name  or 

12 — Matsell  v.  Flanagan,  2  Abb.  13 — Dixon  Crucible  Co.  v.  Gug- 
Pr.  N.  S.  459;  Cox,  367;    Seb.  270.     genheim,    2     Brewster,    321,    Cox, 

559,  576. 


§  73]  BOOK   TITLES   AS  TRADEMARKS.  167 

*  title  of  the  paper,  wliich  is  the  only  continuing  portion 
of  it.  The  contents  of  eacli  issue  are  the  composition  or 
creation  of  the  editor  or  contributors,  are  varied  each 
day,  and  when  given  to  the  pul)lic  all  literary  propri- 
etorshij)  in  them  is  lost.  And  the  law  of  trademarks, 
like  the  law  of  copyright,  cannot  be  applied  to  a  work 
of  so  fluctuating  and  fugitive  a  character.  "^^ 

As  late  as  1881  Sir  George  Jessel,  master  of  the  rolls, 
said:  '*It  does  not  appear  to  me  that  there  was  any 
invention  in  the  combination  of  'Splendid  Misery,'  any 
more  than  there  would  be  in  the  words  'Miserable  Sin- 
ner,' or  anything  of  that  kind.  The  adoption  of  the 
words  as  the  title  of  a  novel  might  make  a  trade- 
mark."^^ 

In  1898  the  appellate  division  of  the  supreme  court  of 
New  York  said  it  could  not  follow  the  reasoning  of 
counsel  ''when  he  contends  that  the  public,  by  its  short 
way  of  referring  to  the  'Commercial  Advertiser,'  has 
given  the  plaintiff  some  kind  of  an  undefined  trademark 
in  this  popular  form  of  speech,— a  doctrine  which  would 
equally  apply  to  a  'sobriquet'  or  diminutive;  that  its 
unauthorized  use  by  the  defendant,  whether  likely  to  in- 
jure the  plaintiff  or  not,  should  be  absolutely  enjoined  as 
an  invasion  of  a  strict  property  right.  "^® 

While,  on  the  other  hand,  the  United  States  circuit 
court  for  the  district  of  New  Jersey  had  held  in  1894 
that  the  words  "Social  Eegister,"  applied  by  a  pub- 
lisiiei'  to  a  director}-  of  a  certain  locality,  containing 
names  of  persons  resident  therein,  selected  with  refer- 
ence to  the  personal  and  social  standing  of  such  persons, 

14— Stephens  v.  De  Conto,  7  Rob-  fluctuating    and     fugitive   a   form, 

ertson,  343;    4  Abb.  Pr.  N.  S.  47:  Clayton  v.  Stone,  2  Paine,  382-392. 

Cox,  442;     Seb.  295.     The  learned  15— Dicks  v.  Yates,  L.  R.  18  Ch. 

court  cites  an  opinion  holding  that  D.  76-88. 

a  newspaper  or  price  current  can-  16 — Commercial    Advertiser 

not    be    copyrighted    because    the  Ass'n  v.   Haynes.   49   N.   Y.    Supp. 

term  science  cannot,  with  any  pro-  938-942. 
priety,  be  applied  to  a  work  of  so 


168  HOPKINS   ON   TRADEMARKS.  [  §  73 

''become  a  trademark,  and  are  entitled  to  protection  as 
such."^" 

From  our  cursory  view  of  the  foregoing  decisions  and 
dicta  it  is  plainly  manifest  tliat  tlie  right  to  technical 
trademark  in  the  title  of  a  periodical  has  been  affirmed 
and  denied  with  some  show  of  reason  upon  each  side. 
The  subject  has  been  ably  discussed  by  Mr.  Browne,  who 
concludes  that  the  name  so  used  is  a  technical  trade- 
mark.^^ In  that  conclusion  we  must  coincide,  and  it  is 
well  sustained  by  the  reasoning  of  Mr.  Rowland  Cox, 
which  we  have  before  quoted.^ '^  But  the  fact  is  patent 
that  it  is  still  a  mooted  question,  and  that  the  solicitor 
attempting  to  restrain  piracy  of  this  kind  would  better 
frame  his  bill  upon  unfair  competition  and  not  upon 
technical  trademark.  The  New  York  supreme  court,  in 
its  decision  above  referred  to,  says  that  "the  fundamen- 
tal doctrine  upon  which  relief  in  this  class  of  cases  is 
afforded ' '  is  that  of  ' '  misleading  or  the  tendency  to  mis- 
lead, with  consequent  injur}^,  actual  or  probable."-^ 

In  a  decision  of  the  United  States  Circuit  Court  of 

17— Social     Register     Ass'n    v.  Stiff,  5  Jur.  N.  S.  947;    Lee  v.  Ha- 

Howard,    60   Fed.   Rep.     270,     271.  ley,  5  Ch.  App.  Cas.  155;    Clement 

The  same  ruling  was  made  in  So-  v.    Maddick,    5    Jur.    N.    S.    592. 

cial  Register  Ass'n  v.  Murphy,  128  And     to     the     same     effect     see 

Fed.  Rep.  116.  Snowden    v.    Noah,    Hopkins,    Ch. 

18— Browne,     Trademarks      (2d  347;     Bell  v.   Locke,   8  Paige,  75; 

ed.),  sec.  115.     As  instances  of  in-  Tallcot  v.  Moore,  6  Hun,  106;   Ste- 

junction     restraining    use    of     in-  phens  v.  DeConto,  4  Abb.  Pr.  N.  S. 

fringing  titles  of    periodicals,   see  47;     Matsell  v.   Flanagan,    2   Abb. 

Edmonds   v.   Benbow,    Seton     (3d  Pr.  N.   S.  459;     Publishing  Co.  v. 

ed.),  905;     Re    Edinburgh    Corro^  Dobinson,  82  Fed.  Rep.  56;    Rich- 

spondent  Newspaper,   Ct.   of  Sess.  ardson  &  Boynton  Co.  v.  Richard- 

Cas.   1st  ser.   I    (new  ed.),   407  n;  son  &  Morgan  Co.,   8  N.  Y.  Supp. 

Cox,  Manual,  No.  34.  53;    Farmers'  Loan  &  Trust  Co.  v. 

19 — Note  to  Clemens  v.  Belford,  Farmers'  Loan   &  Trust  Co.,  1  N. 

14  Fed.    Rep.    728;     Cox,  Manual,  Y.  Supp.  44;     Borthwick  v.  Even- 

684;   ante,  §  72.  ing  Post,  L.  R.  37  Ch.  D.  449;  Estes 

20 — Commercial    Advertiser  v.   Leslie    (2),   29    Fed.    Rep.    91; 

Ass'n   V.   Haynes,   49  N.   Y.   Supp.  Estes  v.  Leslie   (1),  27  Fed.  Rep. 

938-942;     citing  Bradbury   v.   Bee-  22;    Estes  v.  Worthington,  31  Fed. 

ton,  39  Law  J.  Ch.  57;    Ingram  v.  Rep.  154. 


§  74]  BOOK   TITLES   AS  TRADEMARKS.  169 

Appeals  for  the  Second  Circuit,  rendered  since  the  fore- 
going was  written,  it  is  distinctly  held  that  the  name  of 
a  periodical  is  a  technical  common-law-trademark.-' 

S  74.  Play  titles  as  trademarks.— The  principles  stated 
by  Judge  Wallace  in  the  language  which  we  have  here- 
tofore quoted  in  reference  to  book  titles  as  trademarks, 
*'If  literary  property  could  be  protected  upon  the  theory 
that  the  name  by  which  it  is  christened  is  equivalent 
to  a  trademark,  there  would  be  no  necessity  for  copy- 
right laws,"  applies  with  equal  cogency  to  the  name  by 
which  a  play  is  designated.  But  there  is  this  distinc- 
tion between  the  titles  of  plays  and  the  titles  of  books; 
the  fonner  are  comprehensive  of  something  more  than 
the  mere  title  of  the  literary  composition  which  is  pro- 
duced as  a  play,  while  the  latter  are  strictly  limited  to 
the  literary  production  itself.  Practically,  in  all  of  the 
cases  involving  play  titles  with  which  the  courts  of 
this  country  have  had  to  do,  there  was  some  scheme 
of  production  involved  which  represented  the  busi- 
ness enterprise  of  the  manager,  as  well  as  the  pre- 
sentation of  the  ideas  of  the  author.  The  ideas  of  the 
author  again  are  not  entirely  embodied  in  language 
which  reaches  the  audience  in  word  sung  or  spoken. 
The  '* business"  of  the  play  is  sometimes  never  reduced 
to  writing,  and  in  the  majority  of  cases  the  production 
of  the  brain  of  a  third  person,  the  skilled  stage  manager, 
is  of  the  very  essence  of  the  play,  and  is  at  times  the 
deteniiining  factor  which  makes  the  play  a  success.  So, 
in  its  last  analysis,  the  name  of  a  play  is  the  medium 
which  signifies  to  the  patrons  of  the  theatre  three  things : 
the  literary  production  of  the  playright,  the  artistic  aid 
of  the  stage  manager,  and  the  moneyed  investment  as 
well  as  the  skill  in  cast  selection  of  the  manager.  And 
these  three  things  disregard  the  accompanying  investi- 

21— Gannert  v.  Rupert,  62  C.  C.     A.  594,  127  Fed.  Rep.   962,  revers- 
ing S.  C.  119  Fed.  Rep.  221. 


170  UOPKINS   ON   TRADEMARKS.  [§  74 

ture  of  costumes,  scenery,  and  incidental  music  which 
represent  the  efforts  of  the  musician,  the  landscape 
painter,  the  costumer,  and  the  skilled  selector  of  furni- 
ture and  other  accessories.  A  play  title  then  stands 
for  a  kind  of  personal  property  which  is  strictly  sui- 
generis,  the  distinguishing  mark  by  which  the  produc- 
tion is  identified  to  the  public  before  and  after  the  first 
performance.  It  is  manifest  that  a  play  title  also  car- 
ries with  it  a  specific  and  unique  form  of  goodwill  to 
which  all  of  the  things  which  we  have  enumerated  help 
to  contribute. 

The  extent  to  which  courts  of  equity  will  protect 
a  play  from  piracy,  aside  from  any  question  of  copy- 
right, is  not  yet  fully  determined.  The  cases  are  few  in 
number,  but  are  sufficient  to  establish  the  general  prin- 
ciple that  the  broad  doctrine  of  unfair  competition  in 
trade  which  we  have  considered  in  this  book  may  be 
invoked  wherever  deception  of  the  public  and  injury  to 
the  complainant  will  probably  result  from  a  refusal  of 
the  injunction.  This  fact  is  more  important  because  of 
the  difficulty  attendant  upon  making  out  a  case  of  copy- 
right infringement  where  the  subject  matter  involved  is 
a  dramatic  composition. 

In  a  case  in  which  "L'Aiglon"  was  the  play  involved, 
and  in  an  opinion  in  which  he  refers  to  that  name  as 
being  a  trademark  for  the  plaintiff's  organization.  Judge 
McAdam  has  said,  ''The  question,  'What's  in  a  name* 
has  been  answered  by  the  courts  in  many  well-considered 
cases,  wherein  the  exclusive  right  to  a  name  possessed 
or  owned  by  a  successful  business  enterprise  has  been 
maintained  against  imitators  and  wrongdoers  who 
sought,  by  an  unauthorized  use,  to  deceive  the  public 
and  profit  by  the  wrong.  While  courts  have  in  some 
instances  refused  injunctive  relief  to  protect  the  use  of 
the  title  where  plays  were  dissimilar,  and  the  appropria- 
tion a  mere  coincidence  (Frohman  v.  Miller,  8  Misc.  Eep. 
379,  29  N.  Y.  Supp.  1109),  they  have  uniformly  enjoined 


§  74]  BOOK  TITLES  AS  TRADEMARKS.  171 

such  use  where  deception  of  the  public  and  injury  to 
the  plaintiff  were  likely  to  follow  a  refusal  to  grant 
equitable  aid  {Shook  v.  Wood,  32  Leg.  Int.  264;  Illtr  v. 
Abrahams,  82  N.  Y.  519). "22  Jq  a  later  case  the  Supreme 
Court  of  Illinois  affnned  a  decree  of  injunction  in  a  case 
where  the  plaintiff  was  the  producer  of  the  play  ''Sher- 
lock Holmes"  and  the  defendant  subsequently  produced 
a  play  entitled  ''Sherlock  Holmes,  Detective."  In  affiiin- 
ing  the  decree  of  injunction,  the  Supreme  Court  based 
the  plaintiff's  right  to  equitable  relief  upon  the  ground 
that  the  names  of  the  respective  plays  were  so  similar 
that  the  public  "would  be  deceived  to  believe  that  the 
drama  of  the  appellant  company  was  that  which  the 
apellee  had  been  producing."  The  court  expressly 
declined  to  decide  whether  or  not  the  plaintiff  had  a 
trademark  right  or  property  in  the  words  "Sherlock 
Holmes,"  basing  the  relief  upon  the  general  rule  as  to 
unfair  competition,  Judge  Boggs  remarking  that 
"Equity  provides  a  remedy  to  prevent  such  unfair  and 
fraudulent  competition  among  business  rivals  in  any 
and  all  lines  of  legitimate  trade  and  business."-^ 

22— Frohman  v.  Payton,  68  N.  Y.     Frohman,   202   111.   541,    67    N.   E. 
Supp.  849.  Rep.    391,  affirming  s.   c,   103    lU. 

23 — Hopkins  Amusement  Co.  v.    App.  613. 


CHAPTEE  V. 

THE   LOSS  OF  THE   RIGHT  TO   A  TRADEMARK'S   USE. 

^  75.  Laches.— There  is  no  laches  where  a  complain- 
ant is  only  waiting  to  get  a  sufficient  quantity  of  evidence 
to  secure  a  successful  prosecution  of  the  infringer,^  and 
of  course  none  exists  where  the  complaint  has  no  knowl- 
edge of  the  fact  of  infringement;-  and  it  has  been  dis- 
tinctly held  by  the  federal  supreme  court  that  an 
injunction  will  not  generally  be  refused  on  the  ground 
of  delay  alone.^  Following  that  decision,  it  was  said  by 
Judge  Xixon,  in  the  United  States  circuit  court  in  the 
district  of  New  Jersey:  ''There  has  been  large  discus- 
sion of  the  question  how  far  laches,  in  stopping  the  in- 
fringement of  a  trademark,  will  deprive  a  complainant 
of  the  benefits  of  a  preliminary  injunction.  But  that 
discussion  has  been  put  to  rest,  so  far  as  this  court  is 
concerned,  by  the  recent  decision  of  the  supreme  court 
in  the  case  of  McLean  v.  Fleming,^  where  it  was  held 
that  acquiescence  of  long  standing  was  no  bar  to  an 
injunction,  although  it  precluded  the  party  acquiescing 
from  any  right  to  an  account  for  past  profits.'"^ 

The  rule  has  always  been,  however,  that  laches  on  the 
part  of  the  owner  of  a    trademark    would    be    a    bar 

1 — Cave    V.    Myers,    Seton     (4th  3 — McLean  v.  Fleming,  96  U.  S. 

ed.),  238;    Lee  v.  Haley,  22  L.  T.  245. 

N.  S.  251.  4t— Supra. 

2 — Re  Farina,  27  W.  R.  456;  Seb.  5 — Consolidated  Fruit  Jar  Co.  v. 

642;    Weldon  v.  Dick,  L.  R.  10  Ch.  Thomas,    Cox,    665.     And    to    the 

D.  247;    39  L.  T.  N.  S.  467;    Seb.  same     effect     see     La     Republique 

638;     Taylor  v.   Carpenter    (1),    3  Francaise    v.     Schultz,     42    C.    C. 

Story,  458;  Cox,  14;    Seb.  78;   Tay-  A.    233,   102    Fed.    Rep.    153;    San- 

lor  V.   Carpenter    (2),   2  Wood.   &  ders    v.    Jacob,    20    Mo.    App.    96; 

M.  1;    Cox,  32;    9  L.  T.  514;    Gilka  N.  K.  Fairbank  Co.  v.  Luckel,  King 

V.  Mihalovitch,  50  Fed.  Rep.  427.  &  Cake  Soap  Co.  (4),  116  Fed.  Rep. 

332,  54  C.  C.  A.  204. 

172 


§  75J  LOSS  OF  RIGHT  TO  trademark's  USE.  173 

to  his  application  foi-  a  preliminary  injunction.  Judge 
Wallace  stated  the  inile  as  follows:  "Laches  in  prose- 
cuting infringers  has  always  been  recognized  as  a  suffi- 
cient reason  for  denying  a  preliminary  injunction;  some- 
times, apparently,  by  way  of  discipline  to  a  complainant 
who  has  manifested  reluctance  to  burden  himself  with 
the  expense  and  vexation  of  a  lawsuit,  and  delayed  legal 
proceedings  until  his  patience  was  exhausted.  AVhen 
delay  of  the  owner  of  a  patent  or  trademark  to  prose- 
cute infringers  has  been  of  a  tendency  to  mislead  the 
public  or  the  defendant  sought  to  be  enjoined  into  a 
false  security,  and  a  sudden  injunction  would  result 
injuriously,  it  ought  not  to  be  granted  summarily,  but 
the  comi)lainaut  should  be  left  to  his  relief  at  final 
hearing."" 

In  cases  of  unfair  competition,  where  no  technical 
trademark  is  involved,  a  preliminary  injunction  will  be 
denied  where  the  defendant's  goods  have  been  sold 
openly  for  many  years  In  the  package  complained  of.'^ 

Laches  which  prevents  recovery  in  one  case,  will  not 
be  a  bar  to  another  action  of  the  same  complainant 
against  a  subsequent  infringer.  Thus,  in  the  ''Hunyadi" 
cases,  the  complainant,  the  vendor  of  a  Hungarian  min- 
eral water  was  denied  relief  as  to  the  use  of  the  word 
''Hunyadi"  against  the  vendor  of  w^ater  from  another 
spring  in  Hungary,  upon  the  ground  of  laches,  four- 
teen different  Hungarian  mineral  waters  having  been 
marketed  in  the  United  States  under  the  name  ''Hun- 
yadi,"  and  the  complainant  being  estopped  as  to 
dealers  in  such  Hungarian  bitter  waters  by  laches.^ 
Subsequently  an  American  dealer  entered  the  market 
with  an  artificial  water  to  which  he  applied  the  mark 

6— Estes     V.      Worthington,      22         8— Saxlehner  v.  Nielson,  179  U. 

Fed.  Rep.  822.    To  the  same  effect,  S.  43,  45  L.  ed.  77.     Same  v.  Eis- 

see    C.   O.    Burns    Co.     v.    W.     F.  ner  &  Mendelson  Co.,  179  U.  S.  19, 

Burns  Co.,  118  Fed.  Rep.  944.  45  L.  ed.  60. 

7 — Von  Mumm  v.  Steinmetz,  137 
Fed.  Rep.  168. 


17-1  HOPKINS   ON    TRADEMARKS.  [§  76 

^'Hunyadi."  In  affirming  a  decree  granting  the  injunc- 
tion, Judge  Grosscup  said  ''appellant  offers  a  manufac- 
tured water  of  whose  contents  the  public  has  no  knowl- 
edge, and  at  a  cost  ruinous  to  the  importation  of  the 
genuine  water.  The  Supreme  Court  never  meant,  in  our 
judgment,  to  throw  around  such  a  competitor,  the  pro- 
tection of  the  estoppel  indicated,  or  expose  the  public 
to  a  device  under  which  they  would  drink  the  waters 
of  Lake  Michigan,  doctored  after  appellant's  recipe,  in 
the  belief  that  they  were  drinking  the  natural  waters  of 
Hungary'. '  '^ 

§76.    Laches      and      acquiescence      distinguished.— 

^'Laches"  and  ''acquiescence"  are  terms  frequently  used 
synonymously,  or  at  least  without  due  regard  to  their 
respective  meanings.  "Laches"  imports  a  merely  pas- 
sive, while  "acquiescence"  implies  an  active  assent.^ ^ 
The  supreme  court  of  California  has  said,  "  'Laches' 
would  strictly  seem  to  imply  neglect  to  do  that  which 
ought  to  have  been  done;  'acquiescence'  a  resting  satis- 
fied with  or  submission  to  an  existing  state  of  things.  "^^ 
"Acquiescence— that  is,  assent— is  tantamount  to  an 
agreement.  "^  ^  The  supreme  court  of  the  United  States, 
by  Mr.  Justice  Swayne,  has  said:  "Acquiescence  and 
waiver  are  always  questions  of  fact.  There  can  be 
neither  without  knowledge.  The  terms  import  this  foun- 
dation for  such  action.  One  cannot  waive  or  acquiesce 
in  a  wrong  while  ignorant  that  it  has  been  committed. 
Current  suspicion  and  rumor  are  not  enough.  There 
must  be  knowledge  of  facts  which  will  enable  the  party 
to  take  effectual  action.  "^^ 

9— Thackeray    v.    Saxlehner,    60  13— Pence  v.  Langdon,  99  U.   S. 

C.  C.  A.  562,  125  Fed.  Rep.  911,  913.  578-581.     See     also    to    the    same 

10_Wood  on  Limitations,  sec.  62.  effect,  Allen  v.   McKeen.  1   Sumn. 

11— Lux  V.  Haggin,  69  Cal.  255-  276-314;    Evans  v.  Smallcombe,  L. 

269.  R.,  3  H.  L.  249;  Ramsden  v.  Dyson, 

12— Matthews   v.   Murchison,   17  L.  R.  1  H.  L.  129;   Reed  v.  West, 

Fed.  Rep.  760-766.  47  Tex.  240. 


§77]  LOSS  OF  RIGHT  TO  TR.UJEMARK's  USE.  175 

§77.  Acquiescence.— ''The  consent  of  a  manufac- 
turer to  the  use  or  iuiitation  of  his  trademark  by  another 
may,  perhaj^s,  be  justly  inferred  from  his  knowledge 
and  silence;  but  such  a  consent,  whether  expressed  or 
implied,  when  purely  gratuitous,  may  certainly  be  with- 
drawn; and  when  implied,  it  lasts  no  longer  than  the 
silence  from  which  it  springs.  It  is,  in  reality,  no  more 
than  a  revocable  license.  The  existence  of  the  fact  may 
be  a  proper  subject  of  inqury  in  taking  an  account  of 
profits  if  such  an  account  shall  hereafter  be  decreed; 
but  even  the  admission  of  the  fact  would  furnish  no 
reason  for  refusing  an  injunction."^'*  This  dictum  of 
Judge  Duer  in  Amoskeag  Mfg.  Co.  v.  Spear  is  so  com- 
131-ehensive  as  to  warrant  its  extended  quotation  above 
given.  While  it  was  held  by  Vice-Chancellor  Wood  that 
a  plaintiff's  acquiescence  in  the  defendant's  use  of  his 
mark  for  two  years  after  the  plaintiff  had  seen  it  pub- 
licly exhibited  would  disentitle  him  to  relief,^ ^'  an  in- 
junction was  granted  in  a  case  where  a  dissenting 
opinion  shows  that  the  essential  feature  of  the  mark 
had  been  used  by  others  than  plaintiff  with  his  knowl- 
edge for  more  than  twenty  years.^^  It  has  been  held  in 
a  federal  circuit  court  that  acquiescence  for  a  time  equal 
to  that  prescribed  in  the  statute  of  limitations  must  be 
shown.^^  Acquiescence  cannot  be  inferred  and  it  is 
revocable  if  it  could  be.^^ 


14 — Amoskeag  Mfg.  Co.  v.  Spear,  17 — Taylor  v.   Carpenter   (2),   2 

2  Sandf.  S.  C.  599;    Cox,  87.     The  Wood.     &     M.     1;      Cox,     32.     But 

withdrawal   of    gratuitous   permis-  "laches   for    even    less    than    the 

sion  to  use  one's    name    may    be  statutory    period     of     limitations, 

made  at  the  pleasure  of  the  party  aided  by  other  circumstances,  will 

granting  such  permission.    McCar-  bar     a     right."     Acheson,     J.,     in 

del  V.  Peck,  28  How.  Pr.  120.  Prince's  Met.  Paint  Co.  v.   Prince 

15— Beard  v.  Turner,  13  L.  T.  R.  Mfg.  Co..  6   C.  C.  A.   647,  57  Fed. 

iSi.  S.  747;    Cox,  717.  Rep.    938-944.    where    the    plaintiff 

16— Gillott    V.     Esterbrook,      47  was  held  to  be  estopped  by  eight 

Barb.   455      Cox,  340.     Dissent  of  years'  acqtiiescence, 

Ingraham,  J.  18 — Gillott  v.  Esterbrook,  supra; 


176  HOPKINS   ON   TRADEMARKS.  [§  78 

''In  England  the  rule  is  stringent  in  trademark  cases 
that  lack  of  diligence  in  suing  deprives  the  complainant 
in  equity  of  the  right  either  to  an  injunction  or  an  ac- 
count. Our  courts  are  more  liberal  in  this  respect.  A 
long  lapse  of  time  will  not  deprive  the  owner  of  a  trade- 
mark of  an  injunction  against  an  infringer,  but  a  reason- 
able diligence  is  required  of  a  complainant  in  asserting 
his  rights,  if  he  would  hold  a  wrong-doer  to  an  account 
for  profits  and  damages.  This  rule,  however,  applies 
only  to  those  cases  where  there  has  been  an  acquiescence 
after  a  knowledge  of  the  infringement  is  brought  home 
to  the  complainant."^^ 

§  78.  Abandonment.— The  consideration  of  laches  and 
acquiescence  leads  us  naturally  to  the  subject  of  aban- 
donment. The  first  form  of  abandonment  is  by  disuse  of 
the  mark.  "That  the  right  to  use  a  trademark  may  be 
lost  by  abandonment  or  disuse  is  too  clear  to  need  argu- 
ment or  the  support  of  authority."""  But  the  length  of 
time  during  which  the  mark  is  not  used  is  immaterial 
except  when  it  is  such  as,  taken  in  connection  with  all 
the  circumstances,  will  show  the  intention  of  its  owner 
to  abandon  it."^  "A  man  who  has  a  trademark  may 
properly  have  regard  to  the  state  of  the  market  and  the 
demand  for  the  goods;  it  would  be  absurd  to  suppose  he 
lost  his  trademark  by  not  putting  more  goods  on  the 
market  when  it  was  glutted. ' '--  Registration  was  refused 
in  England  where  the  applicant's  mark  "Emollio"  had 
not  been  used  by  him  for  eleven  years,  and  his  applica- 

Amoskeag  Mfg.  Co.  V.  Spear,  supra;  Laverne    v.     Hooper,     Ind.    L.    R. 

Christy   v.    Murphy,    12    How.    Pr.  8  Mad.  149;    Royal  Baking  Powder 

77;     Cox,  164;     Seb.   137;     Menen-  Co.  v.  Raymond,  70  Fed.  Rep.  376. 

dez  V.  Holt,  128  U.  S.  514.  21— Burt   v.    Tucker,    178    Mass. 

19— Nixon,  J.,  in  Sawyer  v.  Kel-  493,  59  N.  E.  Rep.  1111,  52  L.  R.  A. 

logg,  9  Fed.  Rep.  601.  112;     Gillett  v.  Lumsden,    4     Oni. 

20 — Hughes,  J.,  in  Blackwell  v.  Law  Rep.  300. 

Dibrell,    Fed.     Case    No.    1475,    3  22— Chitty,     J.,     in     Monson    v. 

Hughes,    151;     14    Off.    Gaz.    633;  Boehm,   L.   R.    2G   Ch.   D.    398-400; 

Price    &    Steuart,    39;     Seb.    590;  Cartmell,  233. 


§78]  LOSS  OF  RIGHT  TO  trademark's  USE.  177 

tion  was  opposed  by  one  who  had,  in  the  meantime,  reg- 
istered the  word  ''KmoUine"  as  a  trademark  for  articles 
similar  to  those  upon  which  the  applicant  Intended  to 
affix  his  mark  (perfumery).-^  Before  the  courts  will  de- 
clare an  abandonment  by  disuse  there  must  be  satisfac- 
tory proof  of  intention  of  abandonment.  It  has  been 
suggested  by  Chitty,  J.,  that  such  intention  will  be  gath- 
ered from  the  owner's  acts  in  breaking  up  the  moulds  by 
which  the  mark  is  made,  and  taking  the  trade-marked 
article  from  his  price  lists.-^ 

It  must  be  borne  in  mind,  in  this  connection,  that  the 
defense  of  abandonment  is  not  favored  by  the  courts. 
One  judge  has  said,  ''there  is  something  very  abhorrent 
in  allowing  such  a  defense  to  a  wrong.  "-^  Although  as  a 
matter  of  course  a  trademark  once  abandoned  may  be 
adopted  by  another  for  the  same  class  of  merchandise,^*' 
there  must  be  clear  proof  of  the  fact  of  abandonment,-'^ 
and  it  ought  to  be  clearly  shown  that  such  other  person 
is  adopting  the  same  mark  fairly  and  honestly,  and  not 
in  an  attempt  to  filch  from  its  original  owner  the  reputa- 
tion he  has  obtained  for  it.-^  What  act  or  acts  will 
constitute  an  abandonment  must  be  determined  by  the 
facts  in  each  particular  case.  One  English  decision  held 
that  a  dismissal  of  a  l)ill  for  injunction  was  an  abandon- 
ment of  the  trademark  sought  to  be  protected  by  the 

The  abandonment  of  names  used  in  connection  with 
particular  premises  where  selling  or  manufacturing  is 
conducted  has  led  to  some  apparent  conflicts  of  opinion 

23— Re   Grossmith,    6    R.  P.   C.  26— Menendez  v.  Holt,  128  U.  S. 

180;   60  L.  T.  N.  S.  612;   Cartmell,  514;    Royal  Baking  Powder  Co.  v. 

137.  Raymond,  70  Fed.  Rep.  376-382. 

24— Monson  v.  Boehm,  L.  R.  26  27— Sohl   v.   Geisendorf,    1    Wil- 

Ch.  D.  398-405;    Cartmell,  233.  son    (Ind.),  GO;     Seb.   367. 

7     25— Woodbury,   J.,   in  Taylor  v.  28— Royal  Baking  Powder  Co.  v. 

^   Carpenter    (2),   2  Wood.   &  M.   1:  Raymond,  70  Fed.  Rep.  376-382. 

Cox,  32.  29 — Browne  v.  Freeman,   12  W. 


R.  305;    4  N.  R.  476. 


12 


178  HOPKINS   ON   TRADEMARKS.  [§  78 

among  the  courts.     Careful  analysis  of  the  facts  will 
show  that  there  is  some  semblance  of  harmony  in  the 
rulings.    Whether  a  removal  from  the  premises  will  con- 
stitute an  abandonment  of  the  use  of  the  name  depends 
on  whether  the  name  indicates  the  building  itself,  or 
merely  the  business  conducted  therein.    Thus,  "Booth's 
Theatre"  designated  the  theatre  and  not  the  actor,  and 
upon  its  sale  by  Edwin  Booth  he  could  not  restrain  his 
vendee  from  the  use  of  the  name,  as  Messrs.  Jarrett  & 
Palmer  had   fully  advertised   the  fact   that   they  were 
lessees  and  managers,  and  no  question  of  fraud  could 
be  raised.^"^    As  stated  by  Wallace,  J.,  in  Atlantic  Mill- 
ing Co.  V.  Robinson:    ''The  right  to  the  exclusive  use  of 
a  word  or  symbol  as  a  trademark  is  inseparable  from 
the  right  to  make  and  sell  the  commodity  which  it  has 
been  appropriated  to  designate  as  the    production    or 
article  of  the  proprietor.     It  may  be  abandoned  if  the 
business  of  the  proprietor  is  abandoned.     It  may  be- 
come identified  with  the  place  or  establishment  where  the 
article  is  manufactured  or  sold,  to  which  it   has    been 
applied,  so  as  to  designate  and  characterize  the  article 
as  the  production  of  that  place  or  establishment,  rather 
than  of  the  proprietor.     A  trademark  of  this  descrip- 
tion is  of  no  value  to  the  original  proprietor  because 
he  could  not  use  it  without    deception,    and    therefore 
would  not   be   protected   in    its    exclusive    enjoyment. 
Such  a  trademark  would  seem  to  be  an  incident  to  the 
business  of  the  place  or  establishment  to  which  it  owes 
its  origin,  and  without  which  it  can  have  no  independ- 
ent existence.     It  should  be  deemed  to    pass    with    a 
transfer  of  the  business  because   such   an  implication 
is  consistent  with  the  character  of  the  transaction  and 
the  presumable  intention  of  the  parties.  "^^ 

30— Booth  V.   Jarrett,    52    How.  Dixon    Crucible     Co.     v.     Guggen- 

Pr.  169.  heim,  3  Am.  L.  T.  228;    Hudson  v. 

31— Atlantic  Milling  Co.  v.  Rob-  Osborne,    39    L.   J.    Ch.    N.    S.    79: 

Inson.    20  Fed.    Rep.    218;     citing  Shipwright  v.  Clements,  19  W.  R. 


§78]  LOSS  OF  RIGHT  TO  trademark's  USE.  179 

So  that  the  use  of  the  name  'SStiUman"  to  indicate 
the  cloth  product  of  the  Stillman  Mills ;^-  ''Old  Oscar 
Pepper"  to  indicate  the  product  of  the  distiller)^  of 
that  name;'^^  "Osborne  House"  to  designate  a  liotel 
first  owned  by  Osborne ;^^  "Tower  Palace,"  designat- 
ing a  building,  having  a  tower,  where  a  clothing  busi- 
ness was  conducted,"'"'  are  all  held  to  be  indicative  of 
the  premises  and  abandoned  by  the  owner  of  the  name 
who  sells  the  premises  or  removes  therefrom.  It  fol- 
lows that  a  mere  arbitrary  name  not  designating  the 
locality  or  building  in  which  a  business  is  transacted 
will  survive  a  change  in  the  location  of  the  business."*" 

The  length  of  time  during  which  a  trademark  is  not 
used  is,  as  we  have  seen,  merely  a  circumstance  to  be 
considered  with  all  the  other  facts  in  the  case  in  deter- 
mining whether  there  was  an  intention  to  abandon  its 
use.  Thus,  defendants  have  been  restrained  from  using 
a  mark  that  has  lain  in  disuse  for  periods  of  one  year,^^ 
three  years,-'*^  four  years,'**'  nine  years,^^  ten  years,^^  and 
even  twenty  years.^^    The  vital  question  is  the  intention 

599.     See  also   to   the  same  effect  37 — Lemoine  v.  Gauton,  2  E.  D. 

HaU   V.   Barrows,   4   DeG,   J.  &   S.  Smith,  343;    Cox.  142. 

150;   Glen  &  Hall  Mfg.  Co.  v.  Hall,  38— Julian  v.  Hoosier  Drill  Co., 

61  N.  Y.  227-234;  Kidd  v.  Johnson,  75  inj,  408. 

100  U.   S.   617;   Leather  Cloth  Co.  sq_b^,^  ^.   Tucker,    178    Mass. 

V.    American    Leather    Cloth    Co.,  ^gg^  59  ^    ^    ^^^    ^^^^    52  L    R 

11   Jur.   N.    S.    513;    Ainsworth    v.  ^    ^^^ 


Walmesley,  44  L.  J.  555 

32 — Carmichael    v.    Latimer,    11 
R.  L  395. 


40— Lazenby  v.  White,   41   L.   .T. 

N.  S.   354;    Saxlehner  v.  Eisner  & 

Mendelson   Co.    (3),   179   U.   S.   19. 

33— Pepper    v.     Labrot,    8   Fed.     An  injunction  was  refused  because 

I^^P-  29.  plaintiff  delayed    action    for    nine 

34 — Hudson  v.  Osborne,  39  L.  J.     years  in  Amoskeag  Co.  v.  Garner, 

Ch.  N.  S.   79.  55  Barb.  151. 

35 — Armstrong  v.  Kleinhaus,  82         41 — Wolfe    v.    Barnett,     24     La. 
Ky.  303.  Ann.  97. 

36— Dewitt  v.  Mathey  (Ky.),  35         42— Gillott  v.  Esterbrook,  48  N. 
S.  W.  Rep.  1113    (not  officially  re-     Y.  374. 
ported). 


180  HOPKINS   ON    TR.VDEMARKS.  [  §  "^ 

of  the  owner  of  the  mark,  and  the  burden  of  establishing 
abandonment  lies  upon  the  party  who  affirms  it.^" 

There  may  be  an  involuntaiy  abandonment  of  a  trade- 
mark through  the  fact    that,    once    distinctive,    it    has 
ceased  to  indicate  the  merchandise  of  the  owner  of  the 
mark  and  has  become  puhlici  juris  because  it  indicates 
only  a  peculiar  product  or  method  of  manufacture.    This 
again  arises  from  the  peculiar    circumstances    of    each 
case.      ''What  is  the  test  by  which  a  decision  is  to  be 
arrived  at,  whether  a  word  which  was  originally  a  trade- 
mark has  become  publici  juris?    I  think  the  test  must  be 
whether  the  use  of  it  by  other  persons  is  still  calculated 
to  deceive  the  public;  whether  it  may  still  have  the  effect 
of  inducing  the  public  to  buy  goods  not  made  by  the  orig- 
inal owner  of  the  trademark  as  if  they  were  his  goods. 
If  the  mark  has  come  to  be  so  public  and  in  such  univer- 
sal use  that  nobody  can  be  deceived  by  the  use  of  it,  or 
can  be  induced  from  the  use  of  it  to  believe  that  he  is  buy- 
ing the  goods  of  the  original  trader,  it  appears  to  me, 
however  hard   to   some   extent   it  may   appear  on  the 
trader,  yet  practically  as  the  right  to  a  trademark  is 
simply  a  right  to  prevent  a  trader  from  being  cheated 
by  other  persons'  goods  being  sold  as  his  goods  through 
the  fraudulent  use  of  the  trademark,  the  right  to  the 
trademark  must  be  gone."    This  extract  from  an  opin- 
ion of  Mellish,  L.  J.,^^  is  probably  the  clearest  explana- 
tion of  the  cases  involving  this  topic.    The  cases  turn- 
ing upon  this  point  are  many.^'^ 

43— Julian  v.  Hoosier  Drill  Co.,  Ch.  354;    Lea  v.  Millar,  Seb.  513; 

78  Ind.  408.     This  is  analogous  to  Seton  (4th  ed.),  242;    Lea  v.  Dea- 

the  rule  that  where  one  sued  for  kin,     Fed.     Case     No,     8154,    11 

Infringing  a  trademark  sets  up  a  Biss.    23;    Re    Arbenz,    L.    R.    35 

prior  right  to  the    mark  in  ques-  Ch.    D.    248;     Neva    Stearine    Co. 

tion,  it  is  incumbent  upon  him  to  v.  Howling,  9  Vict.  L.  R.  98;  Sher- 

establich  his  prior  use  by  satisfac-  wood  v.  Andrews,  5  Am.  L.  R.  N. 

tory  evidence.     Tetlow  v.  Tappan,  S.  588;    Rs  Hall,  13  Off.  Gaz.  229; 

85  Fed.  Rep.  774.  Liebig's   Extract   Co.   v.   Hanbury, 

44— Ford  v.  Foster,  L.  R.  7  Ch.  17  L.   T.  N.   S.    298;     Watkins    v. 

X>.  611.  Landon,  52  Minn.   389-393;     54  N. 

45 — Lazenby  v.  White,   41    L.  .T. 


§  78]  LOSS  OP  RIGHT  TO  TRADEMARK'S  USE.  181 

The  adoption  of  a  new  label  or  brand  is,  of  course,  an 
abandonment  of  all  the  distinctive  features  of  the  old 
label  or  brand  not  preserved  in  the  new  one."**^ 

The  owner  of  a  trademark  may  by  a  practice  of  ship- 
ping goods  bearing  the  mark  to  the  same  consignee,  so 
that  it  may  be  held  out  to  or  believed  by  purchasers  to 
indicate  some  right  to  the  mark  in  the  consignee,  lose 
the  exclusive  right  to  its  use."*^ 

Tlie  fact  that  a  manufacturer  uses  his  name  or  an 
additional  symbol,  such  as  a  coat-of-anns,  in  connec- 
tion with  the  distinctive  word,  does  not  deprive  him  of 
his  trademark  right  in  the  distinctive  word.  Thus  the 
manufacturer  of  *' Eureka"  shirts,  which  he  marked 
''R.  Ford's  Eureka  Shirt,  London,"  was  awarded  an 
injunction  restraining  a  defendant  from  the  sale  of  an 
article  marked  ''The  Eureka  Shirt. "^^  The  manufac- 
turers of  ''Excelsior  White  Soft  Soap"  sought  to  en- 
join the  makers  of  "Bustard  &  Co.'s  Excelsior  ^Yliite 
Soft  Soap,"  and  upon  the  motion  it  was  held  that  their 
right  to  injunctive  relief  was  not  affected  by  the  fact 
that  the  defendants  had  never  used  the  word  except 
in  conjunction  with  their  firm  name."*^ 

A  manufacturer  who  uses  his  trademark  in  connec- 

W.  Rep.  193;    19  L.  R.  A.  236;  Mar-  Ward  v.  Robinson,  L.  R.  9  Ch.  D. 

shall   V.  Pinkham,    52    Wis.    572;  487. 

Price   &   Steuart,   497.     The   mere  48 — Ford  v.  Foster    L.  R.  7  Ch. 

fact  that  a  name  used    as    trade-  D.  616;   L.  R.  7  Ch.  D.  611;    41  L. 

mark  comes  into  popular  use  in  a  J.  Ch.  682;    27  L.  T.  N.  S.  219;    20 

descriptive  sense   does  not   invali-  W.   R.   818;     Seb.   384.     The  mere 

date  its  use  as  a  trademark.     Sel-  addition    of    a    coat-of-arms   to   a 

chow  V.  Baker,  93  N.  Y.  59;    Cellu-  trademark    (as  registered  in  Eng- 

loid  Mfg.  Co.  V.  Cellonite  Mfg.  Co.,  land)    is   not   sufficient    to    disen- 

32   Fed.  Rep.  94;     Lawrence  Mfg.  title  the  person  using  the  mark  to 

Co.  V.  Tennessee  Mfg.  Co.,  138  U.  sue  for  an  injunction.     Melachrino 

S.  537-547;    Burton  v.  Stratton,  12  v.   Melachrino   Cigarette  Co.,   4  R. 

Fed.  Rep.  696.  P.    C.    215;     Cartmell,    223;    Ham- 

46 — Manhattan  Medicine    Co.    v.  mond  v.  Brunker,  9  R.  P.  C.  301 ; 

Wood,  108  U.  S.  218;     Lea  v.  Mil-  Cartmell,  142. 

lar.  Seton  (4th  ed),  242;    Seb.  513.  49— Braham  v.  Bustard,   1  H.  & 

47 — Robinson     v.     Finlay,    and  M.  447;    9  L.  T.  N.  S.  199;    11  W. 


182  HOPKINS   ON   TRADEMARKS.  [§  78 

tion  with  words  indicating  that  his  goods  are  the  prod- 
uct of  another  maker  will  lose  his  right  to  have  the 
word  used  as  trademark  protected.  This  was  held  in 
a  case  where  '"Eton"  cigarettes  were  so  put  up  as  to 
suggest  that  they  were  of  foreign  manufacture.'^'^  But 
a  manufacturer  who  uses  his  trademark  on  goods  pre- 
pared for  the  jobbing  trade,  adding  to  or  using  there- 
with the  name  of  the  jobber,  does  not  lose  his  right  to 
the  protection  of  the  trademark,  for,  as  said  by  Judge 
Colt:  ''In  doing  this  no  real  deceit  was  practiced  upon 
the  public,  because  the  purchaser  obtained  the  same 
goods  which  he  would  have  purchased  if  the  name  of 
the  jobber  had  not  been  upon  them.'"^^  In  one  case  it 
was  argued  by  the  defendants  that  when  the  plaintiffs 
furnished  their  ''Excelsior"  stoves  to  the  trade  and 
marked  the  dealers'  names  upon  the  stoves,  they 
thereby  permitted  the  dealer  to  hold  himself  out  to 
the  public  as  the  manufacturer  of  the  stoves.  This  was 
not  a  successful  defense,  but  the  court  stood  upon  the 
fact  that  there  was  "nothing  in  connection  with  the 
names  of  these  dealers  to  indicate  that  they  are  the 
manufacturers,  and  there  is  no  evidence  that  any  one 
ever  supposed  they  were  the  manufacturers.  "^^ 

Advertisements   published   in   the   United   States   by 

R.   1061;     2  N.  R.   572;     Seb.   226.  manufacture    by    placing  upon   it 

The   same  defense  was  attempted  the  names  of  his  customers   who 

where  "Cottolene"  was  the  trade-  are  engaged  in  selling  it,  nor  by 

mark  and  "Cottoleo,"  with  the  de-  the  fact  that  the  consumers  know 

fendant's    name,    the    alleged     in-'  only  the   name  and   excellence  ot 

fringement.     Defendant     was     en-  the  article,  and  neither  know  nor 

joined.     N.    K.     Fairbank    Co.    v.  care  who  makes  it,"   Sanborn.   J., 

Central    Lard    Co.,     64     Fed.    Rep.  in    Shaver  v.    Heller   &   Merz   Co., 

133.  108  Fed.  Rep.  821-824,  48  C.  C.  A. 

50 — Wood  V.  Lambert,  L.  R.  32  48.     To  the  same  effect.  City  Brew- 

Ch.  D.  247,  ery   Co.   v.   Powell,    L.   R.    (1897), 

51 — Pike  Mfg.   Co.  v.   Cleveland  App.    Cas.    710,   716;    Lichtenstein 

Stone  Co.,  35    Fed.    Rep.    896-898.  'v.  Goldsmith,  37  Fed.  Rep.  359. 

"One  does  not  lose   the  good   will  52— Sheppard  v.  Stuart,  13  Phila. 

of  his  trade  in  an  article    of    his  117;    Price  &  Steuart,  193. 


§78]  LOSS  OF  RIGUT  TO  TR.VDEMARK's  USE.  183 

a  corporation  having  the  exclusive  sale  of  certain  Hun- 
garian mineral  waters,  to  the  effect  that  the  name 
under  which  the  waters  were  sold  had  become  a  gen- 
eral name  for  all  similar  waters,  and  that  the  corpora- 
tion would  thenceforth  distinguish  the  particular  water 
sold  by  it  by  a  special  trademark,  were  held  not  to 
evidence  an  abandonment  of  the  original  mark  which 
was  binding  on  the  owner  of  the  wells;  Mr.  Justice 
Brown  announcing  the  following  rule  "To  establish 
the  defense  of  abandonment  it  is  necessary  to  show 
not  only  acts  indicating  a  practical  abandonment,  but 
an  actual  intent  to  abandon.  Acts  which  unexplained 
would  be  sufficient  to  establish  an  abandonment  may  be 
answered  by  showing  that  there  never  was  an  intention 
to  give  up  and  relinquish  the  right  claimed.""^ 

In  the  same  case,  the  discontinuance  of  two  suits 
for  infringement,  brought  by  the  selling  corporation, 
after  preliminary  injunctions  had  been  obtained,  are 
held  by  the  supreme  court  not  to  be  binding  upon  the 
complainant  in  the  absence  of  proof  that  the  discon- 
tinuance was  made  with  the  complainant's  knowledge 
and  acquiescence.^^ 

There  may  be  a  constructive  abandonment  of  specific 
features  of  a  trademark,  arising  from  a  failure  to  enu- 
merate such  features  in  securing  registration.  If  the 
registration  shows  a  claim  to  a  trademark  ''more  lim- 
ited in  its  description  than  the  owner's  common-law 
rights  would  otherwise  be,  the  owner  is  bound  by  such 
limitation  as  showing  what  he  really  claimed.  "^^  Thus, 
in  an  application  for  registration  of  a  trademark,  the 

53 — Saxlehner  v.  Eisner  &  Men-  Rep.    600;     Judson    v.    Malloy,   40 

delson  Co..  179  U.  S.  19-31;   citing  Cal.   299;     Hickman    v.    Link,  116 

Singer  Mfg.  Co.  v.  June  Mfg.  Co.,  Mo.  123,  22  S.  W.  Rep.  472. 

163    U.  S.  169,  186,  41   L.   ed.  118,  54— Saxlehner  v.  Eisner  &  Men- 

125,  16  Sup.  Ct.  Rep.  1002;    Moore  delson  Co.,  179  U.  S.  19,  34. 

V.  Stevenson,  27  Conn.  14;     Liver-  55— Hawley,   J.,   in   Hennessy  v. 

more  v.  White,  74  Me.  452,  43  Am.  Braunschweiger  &  Co.,  89  Fed.  Rep. 


184  HOPKINS   ON   TRiVDEMARKS.  [§  78 

failure  to  claim  the  letter  ''s"  as  a  part  or  feature 
thereof  was  held  to  be  an  abandonment  of  that  feature 
of  the  mark.^^ 

A  person  who  acquires  a  patent  covering  a  manufac- 
tured article  known  by  a  trademark,  may,  during  the 
life  of  the  patent,  enjoin  an  infringer  even  though  he 
has  ceased  manufacturing  the  patented  article.'^'^ 

664-668;    citing  Kohler  Mfg.  Co.  v.  v.  Diamond  Steel  Co.,  85  Fed.  Rep. 

Beeshore,  8  C.  C.  A.  215;    59  Fed.  637, 

Rep.  572;    Richter  v.  Reynolds,  8        57 — Janney    v.    Pan-Coast     Ven- 

C.  C.  A.  220;    59  Fed.  Rep.  577.  tilator  Mfg.  Co.,  128  Fed.  Rep.  121. 
56— Pittsburgh  Crushed  Steel  Co. 


CHAPTER  VI. 

GOODWILL. 

§  79.  Defined.— Goodwill,  because  of  the  various 
forms  ill  which  it  exists,  is  difficult  of  definition.  It 
may  be  personal,  in  which  event  it  is  the  result  of  the 
labor  and  efforts  of  the  person  to  whom  it  belongs  and 
survives  a  change  of  locality.  It  may  be  local,  in 
which  event  the  personal  efforts  of  those  who  have 
created  or  assisted  in  creating  it  have  so  identified  it 
with  the  location  that  it  adheres  thereto  and  does  not 
attach  to  a  business  subsequently  established  elsewhere 
by  the  same  persons.  Or,  in  the  case  of  local  goodwill, 
the  goodwill  may  have  largely  had  its  origin  in  the 
natural  advantages  of  the  locality  before  any  personal 
exertions  have  been  expended  upon  it;  as,  for  example, 
a  location  upon  a  water  front  peculiarly  accessible  and 
desirable  as  a  location  for  the  erection  of  a  grain  eleva- 
tor, ship  yard,  pier  or  warehouse,  where  there  exists 
a  natural  advantage  of  site  before  human  enterprise 
erects  the  elevator  or  other  structure.  The  goodwill 
which  then  arises  consists  of  three  things,  the  natural 
advantages  of  the  site,  the  erection  of  a  suitable  build- 
ing or  structure  with  its  proper  mechanical  equipment, 
and,  finally,  the  good  reputation  that  results  from  skil- 
ful, enterprising,  and  honest  management  of  the  busi- 
ness. The  definitions  of  goodwill,  therefore,  must  be 
read  in  the  light  of  these  distinctions. 

''Goodwill  is  a  modem  but  important  growth  of  the 
law,  not  mentioned  by  some  of  the  early  writers,  but 
given   great   prominence    at   the   present   time."^      Mr. 

1— Vann,    J.,   in    People   v.    Rob-     Rep.  685;    45  L.  R.  A.  126. 
erts,   159   N.   Y.   70-80;     53    N.    E. 

185 


186 


liOPKINS   ON   TRADEMARKS. 


:§79 


Justice  Story  has  defined  goodwill  as  "the  advantage 
or  benefit  which  is  acquired  by  an  establishment  be- 
yond the  mere  value  of  the  capital,  stock,  funds,  or 
propeiiy  employed  therein,  in  consequence  of  the  gen- 
eral public  patronage  and  encouragement  which  it  re- 
ceives from  constant  or  habitual  customers,  on  account 
of  its  local  position  or  common  celebrity,  or  reputation 
for  skill  or  affluence,  or  punctuality,  or  from  other  acci- 
dental circumstances  or  necessities,  or  even  from  an- 
cient partialities  or  prejudices."- 

It  would  be  very  difficult,  if  indeed  possible,  to  frame 
a  more  accurate  and  comprehensive  definition  of  local 
goodwill.  This  one,  as  given,  has  been  expressly  and 
in  liaec  verba  adopted  by  the  supreme  court  of  the 
United  States,  Mr.  Chief  Justice  Fuller  prefacing  his 
use  of  it  by  saying  "there  is  difficulty  in  deciding  ac- 
curately what  is  included  under  the  tenn."^ 


2 — story  on  Partnership,  sec.  99. 

3 — Metropolitan  Bank  v.  St. 
Louis  Dispatch  Co.,  149  U.  S.  436- 
446,  "It  is  the  probability  that 
the  business  will  continue  in  the 
future  as  in  the  past,  adding  to  the 
profits  of  the  concern  and  contrib- 
uting to  the  means  of  meeting  its 
engagements  as  they  come  in." 
Sanderson,  J.,  in  Bell  v.  Ellis,  33 
Cal.  620-625. 

"Goodwill  was  defined  by  Lord 
Eldon  in  Cruttwell  v.  Lye,  17  Ves. 
335-346,  to  be  'nothing  more  than 
the  probability  that  the  old  cus- 
tomers will  resort  to  the  old 
place;'  but  Vice-Chancellor  Wood, 
in  Churton  v.  Douglas,  Johnson, 
174-188,  says  it  would  be  taking 
too  narrow  a  view  of  what  is 
there  laid  down  by  Lord  Eldon  to 
confine  it  to  that,  but  that  it  must 
mean  every  positive  advantage 
that  has  been  acquired  by  the  old 


firm  in  the  progress  of  its  busi- 
ness, whether  connected  with  the 
premises  in  which  the  business 
was  previously  carried  on,  or  with 
the  name  of  the  late  firm,  or  with 
any  other  matter  carrying  with  it 
the  benefit  of  the  business."  Mr. 
Chief  Justice  Fuller  in  Menendez 
V.  Holt,  128   U.  S.  514-522. 

"The  goodwill  of  an  established 
business,  which  is  a  common  sub- 
ject of  contract,  is  nothing  but  the 
chance  of  being  able  to  keep  the 
business  which  has  been  estab- 
lished." Wallace,  J.,  in  Barber  v. 
Connecticut  Mutual  Life  Ins.  Co., 
15  Fed.  Rep.  312,  313. 

"It  is  property  of  a  very  peculiar 
and  exceptional  character.  It  is 
intangible  property  which,  in  the 
nature  of  things,  can  have  no  ex- 
istence apart  from  a  business  of 
Kome  sort  that  has  been  estab- 
lished and  carried  on  at  a  partiC' 


§80] 


GOODWILL. 


187 


§80.  In  particular  cases.— "As  applied  to  a  news- 
paper, the  goodwill  usually  attaches  to  its  name  rather 
than  to  the  place  of  publication.  The  probability  of  the 
title  continuing  to  attract  custom  in  the  way  of  circula- 
tion  and   advertising   patronage,   gives   a  value   which 


ular  place."  Thayer,  J.,  in  Metro- 
politan Bank  v.  St.  Louis  Dispatch 
Co.,  36  Fed.   Rep.  722-724. 

"The  goodwill  of  a  business  com- 
prises those  advantages  which  may 
inure  to  the  purchaser  from  hold- 
ing himself  out  to  the  public  as 
succeeding  to  an  enterprise  which 
has  been  identified  in  the  past 
with  the  name  and  repute  of  his 
predecessor."  Wallace,  J.,  in 
Knoedler  v.  Boussod,  47  Fed.  Rep. 
465,  466.  This  definition  was  ap- 
proved on  appeal.  Knoedler  v. 
Glaenzer,  55  Fed.  Rep.  895-899. 

"Goodwill  has  been  defined  as 
'all  that  good  disposition  which 
customers  entertain  toward  the 
house  or  business  identified  by  the 
particular  name  or  firm,  and 
which  may  induce  them  to  con- 
tinue giving  their  custom  to  it." 
There  is  nothing  marvelous  or 
mysterious  about  it.  When  an  in- 
dividual or  a  firm  or  a  corporation 
has  gone  on  for  an  unbroken 
series  of  years  conducting  a  par- 
ticular business,  and  has  been  so 
scrupulous  in  fulfilling  every  obli- 
gation, so  careful  in  maintaining 
the  standard  of  goods  dealt  in,  so 
absolutely  honest  and  fair  in  all 
business  dealings  that  customers 
of  the  concern  have  become  con- 
vinced that  their  experience  in  the 
future  will  be  as  satisfactory  as  it 
has  been  in  the  past,  while  such 
customers'  good  report  of  their 
own   experience   tends   continually 


to  bring  new  customers  to  the 
same  concern,  there  has  been  pro- 
duced an  element  of  value  quite 
as  important — in  some  cases,  per- 
haps, far  more  important — than 
the  plant  or  machinery  with  which 
the  business  is  carried  on.  That 
it  is  property  is  abundantly 
settled  by  authority,  and,  indeed, 
is  not  disputed.  That  in  some  cases 
it  may  be  very  valuable  property 
is  manifest."  Lacombe,  J.,  in 
Washburn  v.  National  Wall  Paper 
Co.,  81  Fed.  Rep.  17-20. 

"Goodwill  has  been  defined  by 
this  court  to  be  'the  favor  which 
the  management  of  a  business 
wins  from  the  public,  and  the 
probability  that  old  customers  will 
continue  their  patronage.' "  Mc- 
Grath,  J.,  in  Williams  v.  Farrand, 
88  Mich.  473-477. 

"There  is  considerable  difficulty 
in  defining  accurately  what  is  in- 
cluded under  this  term  goodwill; 
it  seems  to  be  that  species  of  con- 
nection in  trade  which  induces  cus- 
tomers to  deal  with  a  particular 
firm.  It  varies  almost  in  every 
case,  but  it  is  a  matter  distinctly 
appreciable  which  may  be  pre- 
served (at  least  to  some  extent), 
if  the  business  be  sold  as  a  going 
concern,  but  which  is  wholly  lost 
if  the  concern  is  wound  up,  its  lia- 
bilities discharged,  and  its  assets 
got  in  and  distributed."  Sir  John 
Romilly,  M.  R.,  in  Wedderburn  v. 
Wedderburn,  22  Beavan,  84-104 


188 


HOPKINS   ON   TRADEMARKS. 


[§80 


may   be   protected   and    disposed    of    and    constitutes 
property.""* 

Goodwill  is  an  appurtenant  of  every  form  of  business 
which  relies  directly  upon  public  favor.  We  find  in  the 
books  cases  in  which  the  existence  of  a  valuable  good- 
will is  found  as  appurtenant  to  a  wide  range  of  mercan- 
tile pursuits;  as,  for  example,  in  the  business  of  flour 
and  grain  merchants,-^  the  manufacture  of  patent  medi- 
cines,*^ and  of  feiTO  plates  and  picture  frames,^  the  busi- 
ness of  a  stage-line,^  a  livery-stable,^  a  milk-route,^  "^  a 
drinking  saloon,'^  or  where  the  owners  of  the  goodwill 
were  bankers,^-  bakers,^ ^  glass-stainers,^-'  haberdash- 
ers,'^ glass-blowers,'^  brewers,'"  hardware  dealers,'* 
tailors,"^  cheesemongers,^*^  provision  merchants,^'  manu- 


4 — Metropolitan  Bank  v.  St. 
Louis  Dispatch  Co.,  149  U.  S.  436- 
446;  affirming  s.  c,  36  Fed.  Rep. 
722.  To  tlie  same  effect  see  Porter 
V.  Gorman,  65  Ga.  11;  Dayton  v. 
Wilkes,  17  How.  Pr.  510. 

The  goodwill  and  name  of  a 
newspaper  may  attach  to  the  print- 
ing plant,  so  as  to  be  vested  in  the 
lessee  of  the  plant.  Lane  v. 
Smythe,  46  N.  J.  Eq.  443-454. 

5— Menendez  v.  Holt,  128  U.  S. 
514-522. 

6 — Brown  Chemical  Co.  v.  Meyer, 
31  Fed.  Rep.  453;  s.  c,  139  U.  S. 
540. 

7 — Dean  v.  Emerson,  102  Mass. 
480. 

8— Pierce  v.  Fuller,  8  Mass.  228. 

9 — Herbert  v.  Dupaty,  42  La. 
Ann.  343. 

10— Munsey  v.  Butterfleld,  133 
Mass.  492. 

11— Howard  v.  Taylor,  90  Ala. 
241. 

12— Smith  V.  Everett,  27  Bea- 
van,  446. 


13— Costello  V.  Eddy,  12  N.  Y. 
Supp.  236. 

14— Scott  V.  Rowland,  20  W.  R. 
208. 

15— Re  Randall's  Estate,  8  N.  Y. 
Supp.  652. 

16 — Featherstonhaugh  v.  Fen- 
wick,  17  Ves.  298. 

17— Hall  V.  Hall,  20  Beavan,  139. 

18 — Thompson  v.  Andrus,  73 
Mich.  551. 

19 — Parsons  v.  Hayward,  31  L. 
J.  Ch.  666. 

20— Hudson  v.  Osborne,  39  L.  J. 
Ch.  79. 

21— Scott  V.  Mackintosh,  1  V.  & 
B.  503. 

22— Turner  v.  Major,  3  Giff.  442. 

23 — Armstrong  v.  Bitner,  71  Md. 
118;  Thompson  v.  Winnebago 
County,   48  Iowa,  155. 

24 — Macdonald  v.  Richardson,  1 
Giff.  81. 

25— Morris  v.  Moss,  25  L.  J.  Ch. 
194. 

26 — Potter  v.  Commissioners  of 
Inland  Revenue,  10  Ex.  147. 


§  80]  GOODWILL.  189 

facturing  cliemists,^^  real  estate  and  fire  insurance 
agents,-^  commission  agents,^^  mercers,-^  paper-mak- 
ers,-'^ pencil-makei-s,-"  liotel  or  public-house  keepers,'-^** 
whisky  merchants,-"-*  dyers,^*'  dealers  in  works  of  art 
and  artists'  materials,'"  dealers  in  boots  and  shoes,''- 
tobacco  brokers,'''^  hide  dealers,''^  snuff  makers,-'"'  uphol- 
sterers,"-" iron  masters,-''^  dealers  in  seeds,  grains  and 
plants,^^  carriers,^'-*  milliners ;^*^  and  as  we  will  see  else- 
where, physicians,  solicitors  and  attorneys  may  have  a 
vendible  goodwill. 

It  is  patent  that  a  goodwill  may  be  created  in  con- 
nection with  any  business,  enterprise,  occupation  or 
profession.  The  older  cases  exjTressly  denied  the  exist- 
ence of  a  goodwill  which  could  be  the  subject  of  sale, 
in  connection  with  the  learned  professions.  Thus,  Lord 
Chancellor  Chelmsford,  as  recently  as  1858,  said:  "The 
term  goodwill  seems  wholly  inapplicable  to  the  business 
of  a  solicitor,  which  has  no  local  existence,  but  is  en- 
tirely personal,  depending  upon  the  trust  and  confi- 
dence which  persons  may  repose  in  his  integrity  and 
ability  to  conduct  their  legal  affairs.  "^^ 

27 — Banks  v.  Gibson,  34  Beavan,  34 — Goodman    v.    Henderson,  58 

566.  Ga.  567. 

28— Spratt  v.  Jeffery,  10  B.  &  C.  35 — Hammond  v.  Douglas,  5  Ves. 

249;     Lashus     v.     Chamberlain,    G  539. 

Utah,  385;    Elliott's  Appeal,  60  Pa.  36 — Chissum   v.    Dewes,   5   Russ. 

St.   161;     Musselman  &  Clarkson's  29. 

Appeal,  62  Pa.   St.  81.  37— Hall   v.   Barrows,   4   DeG.    I. 

29— Kidd  V.   Johnson,   100  U.   S.  &  S.  150. 

617.  38— Iowa  Seed  Co.    v.    Dorr,   70 

30— Bryson   v.   Whitehead,   1    S.  la.  481. 

&  S.  74.  39— Cruttwell    v.    Lye,    17    Ves. 

31— Knoedler  v.  Boussod,  47  Fed.  335. 

Rep.    465;     Knoedler    v.    Glaenzer,  40— Shackle  v.    Baker,     14     Ves. 

55  Fed.  Rep.  895.  468. 

32— Curtis    v.    Gokey,    68    N.    Y.  41— Auten   v.    Boys,    2    DeGex    & 

300.  Jones,   626-636.     And  to   the  same 

33 — Davies  v.   Hodgson,  25  Bea-  eCfect  see  Sheldon  v.  Houghton,  5 

van,  177.  Blatchf.    285,    291,    Fed.    Case   No. 


190  HOPKINS   ON   TRADEMARKS.  [§  80 

That  tliei-e  is  good  reasoning  in  this  dictum  cannot  be 
denied.    In  a  case  of  later  date,  in  Scotland,  it  was  said 
''there  is  truly  no  such  thing  as  goodwill  in  the  case  of 
a  business  carried  on  by  a  professional  man,  such  as  a 
physician,  surgeon,  or  law  agent,  whose  success  depends 
entirely  upon  his  own  personal  skill.    It  is  quite  differ- 
ent in  the  case  of  a  trade  or  manufacture,  where  the 
employer  may  have  the  possession  of  patents  or  trade 
seci^ets,  or  may,  by  long  exercise  of  his  trade  or  manu- 
facture in  some  particular  locality,  have  drawn  together 
skilled  artisans  and  attracted  the  custom  of  a  district 
to  his  establishment.    In  such  a  case  it  is  not  the  indi- 
vidual skill  of  the  employer,  but  the  reputation  which 
his  establishment  has  acquired,  which  creates  that  in- 
corporeal, but  frequently  valuable,  estate  known  as  the 
'goodwill'  of  a  trade.     But  there  is  no  such  thing  in 
the  case  of  a  professional  man.    His  business  dies  with 
him,  and  the  man  who  comes  after  him  in  the  district 
must  depend  for  success  upon  his  own  exertions.    It  is 
quite  true  that  such  businesses  are  occasionally  sold; 
but  what  is  thus  sold  in  case  of  a  living  professional 
man  retiring  from  business  is  truly  the  personal  recom- 
mendation which  the  seller  gives  to  his  former  clients 
or  patients  in  favor  of  his  successor,  coupled  with  the 
predecessor's  own  retirement  from  business.    But  where 
the  physician  or  law  agent  is  dead,  nothing  of  the  kind 
can  take  place.     He  has  been  removed  by  death  from 
all  possibility  of  competing  with  the  new  doctor  or  the 
new  solicitor,  and  his  voice  being  forever  silenced,  he 
cannot   give   any   recommendation    to    his    clients    or 
patients.  "^2 

12,748;    Graver  v.  Acme  Harvester  has   been   held    that   the    goodwill 

Co.,  209  111.  483,  70  N.  E.  Rep.  1047,  of  an  attorney  was  not  a  subject  of 

affirming   Acme   Harvester    Co.   v.  administration.     Spice    v.    James, 

Craver,  110  111.  App.  413.  Seb.  46;    Arundell  v.  Bell,  52  L.  J. 

42— Lord  Curriehill  in    Bain    v.  Ch.  537. 

Munro,   15   Scot.  L.  Rep.   260.     It  In  an   early    case,    however,    it 


§81. 


GOODWILL. 


191 


While  the  courts  have,  for  the  reasons  stated,  looked 
with  disfavor  upon  executory  contracts  for  the  sale  of 
the  goodwill  of  a  i^rofessional  man's  practice,  and  have 
refused  to  decree  specific  performance  under  such  con- 
tracts," still  when  the  sale  is  complete  and  the  contract 
partly  executed,  its  terms  will  he  enforced.'^  Thus 
where  a  solicitor  retired,  pennitting  his  partner  to  con- 
tinue the  use  of  the  firm  name,  in  consideration  of  an 
annuity  to  be  paid  him,  and  the  continuing  partner  de- 
faulted in  the  payment  of  the  annuity,  the  contract  was 
specifically  enforced.^-"' 

In  the  United  States  there  have  been  frequent  in- 
stances of  the  sale  of  the  goodwill  of  a  medical  practi- 
tioner, and  contracts  for  such  sales  have  been  uniformly 
held  good.^" 

§81.  As  a  subject  of  sale.— "The  goodwill  of  a 
trade  is  a  subject  of  value  and  price.     It  may  be  sold. 


was  held  that  a  contract  entered 
into  by  a  practicing  attorney  to 
relinquish  practice,  recommend  his 
clients  to  his  successor,  that  he 
would  not  practice  within  certain 
limits,  and  would  permit  the  use 
of  his  name  in  the  first  name  of 
his  successor  for  a  certain  period, 
was  good  in  law.  (1803)  Bunn  v. 
Guy,  4  East,  190.  And  in  a  simi- 
lar case,  where  a  solicitor  sold  his 
practice  and  agreed  not  to  prac- 
tice in  Great  Britain  for  twenty 
years.  Lord  Langdale  held  the 
contract  valid  and  binding  on  the 
vendor,  and  he  was  enjoined  from 
attempting  to  resume  his  practice 
in  Great  Britain  during  the  speci- 
fied time.  (1841)  Whittaker  v. 
Howe,  3   Beavan,  383. 

But  the  courts  have  refused  to 
decree  specific  performance  of  a 
contract  for  the  sale  of  an  attor- 
ney's practice.  Bozon  v.  Farlow,  1 
Mer.   459:     Seb.  22;    Thornbury  v. 


Bevill,  1  Y.  &  C.  Ch.  554;     6  Jur. 
407;    Seb.  71. 

And  where  a  member  of  a  firm 
of  surgeons  died,  it  was  held  that 
the  survivor  could  not  be  obliged 
to  sell  the  goodwill  of  the  prac- 
tice for  the  joint  benefit  of  him- 
self and  his  deceased  partner's 
estate,  Vice-Chancellor  Leach  re- 
marking that  "such  partnerships 
are  very  different  from  commer- 
cial partnerships."  Farr  v.  Pearce, 
3  Madd.  74. 

43 — See  last  note. 

44 — Hanna  v.  Andrews,  50  la. 
462;    Sraalley  v.  Greene,  52  la.  241. 

45— Aubin  v.  Holt,  2  K.  &  J.  66. 

46 — Webster  v.  Williams,  62 
Ark.  101;  34  S.  W.  Rep.  537 
Bradbury  v.  Barden,  35  Conn.  577 
Martin  v.  Murphy,  129  Ind.  464 
Pickett  V.  Green,  120  Ind.  584 
Hoyt  V.  Holly,  39  Conn.  326;  Gil 
man  v.  Dwight,  13  Gray,  356 
Dwight   V.    Hamilton,    113     Mass 


192  HOPKINS   ON   TRADEMARKS.  [§81 

bequeathed,  or  become  assets  in  the  hands  of  the  per- 
sonal representative  of  a  ti'ader,"'*^  or  it  may  be  mort- 
gaged.^^ 

It  may  be  of  greater  value  than  the  stock  of  goods  or 
i^lant  of  machinery  with  which  the  business  is  carried 
on,"*^  or  it  may  attach  to  the  mere  name  of  a  publication 
and  have  a  definite  value  apart  from  and  in  no  wise  de- 
l^endent  upon  any  tangible  property.^^ 

It  cannot  be  sold,  by  a  judicial  decree  or  otherwise, 
apart  from  the  business  with  which  it  is  connected.^^ 

It  may  be  given,  together  with  the  business  with 
which  it  is  connected,  in  payment  for  stock  in  a  corpo- 
ration, so  that  stock  issued  solely  for  such  goodwill 
will,  to  the  extent  of  its  value,  be  issued  for  ''property 
actually  received"  within  the  meaning  of  section  42  of 
the  stock  corporation  law  of  the  state  of  New  York.^^ 
The  goodwill  of  a  domestic  corporation  is  property 
which  is  taxable  as  part  of  its  capital  stock.^^  That  of 
a  foreign  corporation  is  liable  to  taxation  ''at  the  place 
where  it  has  a  market  value.  "^^ 

175;    Warfield  v.  Booth,  33  Md.  63;  47— Tindal,  C.  J.,  in  Hitchcock  v. 

Miller  v.  Keeler,  9  Pa.  Co.  Ct.  R.  Coker,  6  Ad.  &  E.  428-454. 

274;     Butler  v.   Burleson,    16    Vt.  48 — Metropolitan  National  Bank 

176;    Tichenor  v.  Newman,  186  111.  v.  St.  Louis  Dispatch  Co.,  36  F<,d. 

264,  57  N.  E.  Rep.  826.  Rep.  722,  724. 

But,   to   the   contrary,  see   Man-  49 — Washburn  v.  National    Wall 

deville  v.  Harman,  42  N.  J.  Eq.  185.  Paper  Co.,  81  Fed.  Rep.  17-20. 

In  this  case  the  covenant  was  as  50 — Metropolitan     Bank    v.     St. 

follows:     "In  consideration  of  this  Louis  Dispatch  Co.,  149  U.  S.  436- 

contract,    made    with   him    by    the  446;    Boon  v.  Moss,  70  N.  Y.  465. 

said  Mandeville,  the  said  Harman  51 — Robertson     v.    Quiddington, 

hereby   covenants   and   agrees   not  28  Beavan,  529;    Metropolitan  Na- 

to  engage  in  the  practice  of  medi-  tional  Bank  v.  St.  Louis  Dispatch 

cine    or   surgery     in     the     city    of  Co.,  36  Fed.  Rep.  722-724;  s.  c,  149 

Newark  at  any    time    hereafter."  U.  S.  436-446. 

The  court  held   that  the  law  was  52 — Washburn  v.  National  Wall 

unsettled   as   to   whether    such    a  Paper  Co.,  81  Fed.  Rep.  17. 

contract  was  or  was  not  void  as  in  53 — Matter  of  Hondayer,  150  N. 

restraint  of  trade,    and    therefore  Y.  37. 

denied  the  preliminary  injunction  54 — People  v.  Roberts,  159  N.  Y. 

sought  for.  70;    53  N.  E.  Rep.  685. 


§81]  GOODWILL.  193 

A  stockholder  (holding  less  than  all  of  its  stock) 
cannot  transfer  the  goodwill  of  a  coq:)oration.^^ 

It  is  clear  that  the  goodwill  of  a  i)rofessional  man 
cannot  be  made  the  subject  of  involutary  sale.  In  the 
language  of  the  supreme  court  of  Tennessee,  "certainly 
there  can  be  no  forced  sale  or  transfer  in  invitum  of 
such  (professional)  goodwill  so  far  as  it  is  based  upon 
professional  reputation  and  standing,  such  as  arises 
from  the  skill  of  physicians,  dentists,  attoraeys,  etc., 
whatever  may  be  done  as  to  such  goodwill  as  arises  out 
of  location."^® 

It  must  be  remembered  that  the  trademarks  and  the 
goodwill  of  a  business  are  inseparable.  "We  have  seen 
elsewhere  that  a  trademark  can  have  no  existence  in 
gross.  It  is  strictly  appurtenant  to  the  goodwill  of  the 
business  in  which  it  is  used.^'^  And  so  it  has  been  said 
of  goodwill  that  ** while  it  is  not  necessarily  local,  it  is 
usually  to  a  great  extent,  and  must  of  necessity,  be  in- 
cident to  a  place,  an  established  business,  or  a  name 
known  to  the  trade.  "^^ 

In  a  conveyance  of  goodwill,  however,  apt  words 
should  be  employed.  Thus  it  has  been  held  that  the 
goodwill  was  not  covered  by  a  clause  in  a  contract  of 
partnership  relating  to  the  partnership  **  property, 
credits  and  effects,"  or  ''stock  in  trade  and  effects. "^^ 
And  a  similar  holding  has  been  made  in  regard  to  the 
words   ''premises,    stock   in   trade,   etc.,"*^*^   as   well   as 

55— Spring  Valley  Water  Works  Wltthaus    v.    Braun,    44    Md.    303; 

V.  Schottler,  62  Cal.  69,  118.  Hoxie  v.  Chaney.  143  Mass.  592;  10 

56— Wilkes,  J.,  in  Slack  v.  Sud-  N.    E.    Rep.    713;    Russia    Cement 

doth.  102  Tenn,  375.  Co.  v.  Le  Page.  147  Mass.  206,  17  N 

57 — "As  an  abstract  right,  apart  E.  Rep.  304. 

from  the   article   manufactured,  a  58 — Vann,  J.,   in  People  v.  Rob 

trademark  cannot  be  sold,  the  rea-  erts,  159  N.  Y.  70-83;    53  N.  E.  Rep 

son  being  that  such  transfer  would  685;     45  L.  R.  A.  126. 

be  a  fraud  upon  the  public."    Colt,  59— Hall  v.  Hall,  20  Beavan.  139 

J.,  in  Morgan  v.  Rogers,  19   Fed.  60 — Burfield    v.    Rouch,  31  Bea 

Rep.     596.     And    to    same    effect,  van,  241. 
13 


194  HOPKINS  ON  TRADEMARKS.  [§81 


where  the  words  "estate  and  effects"  were  used  in 
partnership  articles.^^ 

On  the  other  hand,  Lord  Westbury  construed  the 
words,  ''stock  belonging  to  the  partnership,"  to  in- 
clude the  goodwill,**-  and  other  eminent  judges  have 
held  goodwill  to  be  included  in  the  words  ''moneys, 
stocks  in  trade,  debts,  effects  and  things, "^^  and  "prop- 
erty and  effects,"^'*  while  Vice-Chancellor  Malins  said: 
"The  sale  of  a  business  is  a  sale  of  the  goodwill.  It  is 
not  necessary  that  the  word  'goodwill'  should  be  men- 
tioned. ...  In  the  sale  of  a  business  a  trademark 
passes,  whether  specially  mentioned  or  not,"  He  ac- 
cordingly held  that  goodwill  was  included  in  an  assign- 
ment that  conveyed  all  the  assignor's  interest  in  the 
partnership  premises  and  effects,  without  specifically 
referring  to  the  goodwill.^^  In  a  suit  for  the  specific 
perfonnance  of  a  contract  for  the  purchase  of  a  share 
in  a  business,  in  which  the  expression  "goodwill,  etc." 
was  employed,  Lord  Eomilly  was  of  opinion  that  "these 
words  are  connected  together,  and  unite  such  other 
things  as  are  necessarily  connected  with  and  belong  to 
the  goodwill,  many  of  which  are  easily  pointed  out;  for 
instance,  the  use  of  trademarks.  .  .  .  All  these 
would  be  included  in  the  words  et  cetera,  and  would  be 
included  in  the  conveyance.'"**' 

The  words  "business  connections  and  patronage" 
have  been  held  to  convey  the  goodwill."" 

In  this  connection  it  is  to  be  noted  that  there  are 
two  general  classes  of  goodwill— general  and  local.   The 

61 Steuart  v.  Gladstone,  L.   R.  entire   assets    of   a   business    does 

10  Ch.  D.  646.  not   necessarily   include   the    good- 

62 Hall  V.   Barrows,  4   DeG.  J.  will.      Santa     Fe     Electric     Co.    v. 

^  g    150  Hitchcock    (New   Mex.),     50    Pac. 

63— Rolt  V.  Bulmer,    Seb.  614.  332. 

64 Reynolds  v.  Bullock,  47  L.  J.  66— Cooper  v.  Hood,  26  Beavan, 


Ch.  773. 


29c 


65— Shipwright  v.   Clements,  19         67— Kellog   v.   Totten,     16    Abb 
W.  R.  599.    But  a  mortgage  of  the     Pr.  35. 


§  82]  GOODWILL.  195 

t 

distinction  is  well-drawn  in  an  English  case,  as  fol- 
lows: "In  some  classes  of  business,  when  the  trade  has 
long  been  carried  on  in  a  profitable  manner  in  a  particu- 
lar house,  and  a  new  tenant  comes  in  and  continues  to 
carry  on  the  same  business  there,  it  is  found  by  expe- 
rience that  many,  if  not  all,  of  the  customers  resort 
there  as  before.  This  is  found  so  regularly  to  happen 
that  it  has  become  usual  to  pay  a  money  value  for  it, 
which  is  commonly  called  'goodwill.'  It  may  be  that 
there  may  be  a  species  of  goodwill  which  may  be  the 
subject  of  bargain  and  sale,  although  not  dependent  on 
the  business  being  carried  on  in  any  particular  place; 
for  instance,  in  the  case  of  what  are  called  'quack- 
medicines.'  But  when  we  come  to  speak  of  the  good- 
will of  a  public-house,  it  is  obvious  that  it  is  a  thing 
which  is  attached  to  a  locality."^®  In  accordance  with 
this  rule,  whenever  the  goodwill  is  local,  in  the  sense 
of  being  attached  to  a  particular  house  or  store,  it  will 
pass  with  a  sale  of  the  lease  of  the  trading  premises,"^ 
or  the  sale  of  a  public  house,"^  or  even  a  tailoring  estab- 
lishment.'^^ 

§  82.  Goodwill  subject  to  proceedings  in  eminent 
domain.— Where  the  goodwill  of  a  business  transacted 
on  particular  premises  has  been  injured  by  the  invasion 
of  the  realty  in  eminent  domain  proceedings,  the  Mas- 
sachusetts court  has  said  that  such  goodwill  of  a  lessee 
or  owner  ''is  not  property  for  which  damages  can  be 
included,  and  is  to  be  considered  only  so  far  as  it  tends 
to  embrace  the  market  value  of  the  estate  that  is  in- 
jured. "'^^ 

68— Llewellyn  v.  Rutherford,  L.  Ch.    D.    226;    Elliott's    Appeal,    60 

R.  10  C.  P.  456.  Pa  St.  161. 

69 — Daugherty  v.  Van  Nostrand,  71 — Parsons     v.      Hay  ward,      31 

1   Hoff.  Ch.    (N.  Y.)    68;   Williams  Beavan,    199;    Chittenden    v.    Wit- 

V.  Wilson,  4  Sandf.  Ch.  379.  beck,  50  Mich.  401-421. 

70 — Ex  parte  Punnett,  L.  R.  16  72 — Edmonds  v.  Boston,  108  Mass. 

549. 


196  HOPKINS   ON   TRADEMARKS.  [§83 

§  83.     Goodwill  in  its  relation  to    firm     and    other 
names.— While  the  unity  existing  between  goodwill  and 
trademarks  is   clearly  defined,   the    subject    of    trade- 
names  or  firm-names  in  their  relation  to   goodwill  is 
attended  with   some   difficulty.     The   general   rule  has 
been  well  stated  by  Vice-Chancellor  Wood,  as  follows: 
*'The  name  of  a  firm  is  a  very  important  part  of  the 
goodwill  of  the  business  can-ied  on  by  the  firm.    A  per- 
son says:    'I  have  always  bought  good  articles  at  such 
a  house  of  business;  I  know  it  by  that  name,  and  I  send 
to  the  house  of  business  identified  by  that  name  for  that 
purpose.'    There  are  cases  every  day  in  this  court  with 
reference  to  the  use  of  the  name  of  a  particular  firm, 
connected  generally,  no  doubt,  with    the    question    of 
trademark.     But  the  question  of  trademark  is  in  fact 
the  same  question.     The  firm  stamps  its  name  on  the 
articles.     It  stamps  the  name  of  the  firm  which  is  car- 
rying on  the  business  on  each  article,  as  a  proof  that 
they  emanate  from  the  firm;  and  it  becomes  the  known 
firm  to  which  applications  are  made,  just  as  much  as 
when  a  man  enters  a  shop  in  a  particular  locality.    And 
when  you  are  parting  with  the  goodwill  of  a  business, 
you  mean  to  part  with  all  that  good  disposition  which 
customers  entertain  towards  the  house  of  business  iden- 
tified by  the  particular  name  or  firm,  and  which  may 
induce  them  to  continue  giving  their  custom  to  it.    You 
cannot  put  it  anything  short  of  that.     That  the  name 
is  an  important  part  of  the  goodwill  of  a  business  is 
obvious,  when    we    consider    that    there    are    at    this 
moment  large  banking  firms,   and  brewing  firms,   and 
others,  in  this  metropolis,  which  do  not  contain  a  single 
member  of  the  individual  name  exposed  in  the  firm."^* 
This  dictum,  however,  is  flatly  opposed  to  the  rulings  of 
the  American  courts,  that  the  sale  of  the  goodwill  of  a 
business  carries  with  it  no  right  to  the  use  of  the  ven- 

73 — Churton  v.  Douglas,  Johns.  174. 


§  84]  GOODWILL.  197 

dor's  name  as  the  name  of  the  establishment/^  al- 
though the  purcliaser  may  properly  advertise  himself 
as  being  "successor  to"  his  vendor  J"'  And  the  later 
English  cases  indicate  that  the  rule  has  been  somewhat 
modified  in  England,  Justice  Stirling  saying,  "the  de- 
fendant is  entitled  to  use  the  plaintiff's  name  in  the 
business  so  long  and  so  far  as  he  does  not  by  so  doing 
expose  him  to  any  liability,  but  no  further."^*'  The 
American  courts  have  very  properly  gone  to  the  length 
of  holding  that,  upon  the  withdrawal  of  a  partner,  the 
remaining  partners  w411  be  enjoined  from  continuing 
the  use  of  a  firm  name  which  indicates  that  the  with- 
drawing partner  is  still  a  member  of  the  firm.'^^  Where 
the  name  is  not  a  proper  name,  its  subsequent  use  by 
the  vendor  of  the  goodwill  will  of  course  be  enjoined."^* 

§  84.  Rights  of  vendor.— The  vendor  of  the  goodwill 
of  a  business  may,  in  the  absence  of  any  agreement  to 
the  contrary,  re-engage  in  a  competitive  business.'^^ 

As  said  by  Chief  Justice  Bigelow  in  the  supreme 
court  of  Massachusetts:  "Whenever  such  is  the  intent 
of  the  parties,  it  is  carried  into  effect  by  an  express 
stipulation,  which,  if  not  in  undue  restraint  of  trade, 
may  be  valid  and  binding.  But  we  know  of  no  case 
where  any  such  agreement  has  been  raised  by  mere  im- 
plication, arising  from  the  sale  of  the  goodwill  of  a 
person's  trade,  in  connection  with  a  particular  place 
of  business  where  it  has  been  carried  on."^° 

74 — Knoedler     v.     Glaenzer,     55  79 — Hoxie  v.  Chaney,  143   Mass. 

Fed.  Rep.  895;   Reeves  v.  Denicke,  592-596;  10  N.  E.  Rep.  713,  58  Am. 

12  Abb.  Pr.  N.  S.  92.  Rep.  149;  Trego  v.   Hunt,  65  L.  J. 

75 — Knoedler     v.     Glaenzer,     55  Ch.  1. 

Red.  Rep.  895;   Weed  v.  Peterson,  80 — Bassett  v.  Percival,  87  Mass. 

12  Abb.  Pr.  N.  S.  178.  (5   Allen),    345-347;     and    to     the 

76 — Thynne    v.     Shove,     L.     R.  same  effect  see  Porter  v.  Gorman, 

(1890)    45  Ch.  D.  577-582.  65   Ga.    11;    Knoedler   v.    Boussod! 

77 — McGowan    v.   McGowan,    22  47    Fed.    Rep.    465;     Knoedler     v. 

Ohio  St.  370.  Glaenzer,  55  Fed.  Rep.  895;  Berga- 

78 — Drake  v.  Dodsworth,  4  Kas.  mini   v.  Bastien,   35    La.  Ann.    60, 

159.  48  Am.  Rep.  216;  White  v.  Jones, 


198  HOPKINS   ON   TRADEMARKS.  [§  84 

In  a  later  case  involving  the  sale  of  the  goodwill  of 
a  medical  practice,  the  same  court  distinguished  the 
facts  from  those  in  the  case  quoted  from,  and  held  that 
a  sale  of  this  kind  of  goodwill  contained  by  implication 
a  covenant  not  to  re-engage  in  the  medical  practice  in 
the  same  locality /^^ 

An  English  writer  has  said,  ^'As  the  decisions  at 
present  stand,  the  title  to  this  section  is  to  some  extent 
misleading,  inasmuch  as  the  legal  position  of  the  as- 
signor of  a  business,  after  he  has  parted  with  it,  is  in 
Eo  way  different  from  that  of  any  other  member  of  the 
public,  provided,  of  course,  that  he  has  not  bound  him- 
self by  additional  restrictive  covenants.  "^^  Even  in 
the  absence  of  express  stipulation,  good  faith  requires 
of  a  party  who  has  sold  the  goodwill  of  his  business 
that  he  should  do  nothing  which  tends  to  deprive  the 
purchaser  of  its  benefits  and  advantages.  It  is  clear 
that  he  has  no  right  to  hold  himself  out  as  continuing 
the  business  which  he  sold  to  the  plaintiff,  or  as  carry- 
ing on  his  former  business  at  another  place  to  which 
he  has  removed.^^  In  other  words,  in  every  case  of  the 
sale  of  a  goodwill  the  vendor  must  not  enter  into  an 
unfair  competition  with  his  purchaser.     What  will  con- 

1  Abb.  Pr.  N.  S.  337;  Howe  v.  Over,  3  Brewst.  133;  Moreau  v.  Ed- 
Searing,  6  Bosw.  354;  Cruttwell  v.  wards,  2  Tenn.  Ch.  347;  Palmer  v. 
Lye,  17  Ves.  335;  Dayton  v.  Wilkes,  Graham,  1  Pars.  Eq.  Cas.  476; 
17  How.  Pr.  516;  Hanna  v.  An-  Findlay  v.  Carson,  97  Iowa,  537, 
drews,  50  la.  462;  Cottrell  v.  Bab-  66  N.  W.  Rep.  759;  Drake  v.  Dods- 
cock  Mfg.  Co.,  54  Conn.  138;  Cos-  worth,  4  Kansas,  135;  Ranft  v 
telle  V.  Eddy,  128  N.  Y.  650;  Wil-  Reimers,  200  111.  386,  60  L.  R.  A. 
liams  V.  Farrand,  88  Mich.  473;  291,  65  N.  E.  Rep.  720. 
Jackson  v.  Byrnes,  103  Tenn.  698,  54  81— Dwight  v.  Hamilton,  113 
S.  W.  Rep.  984;    Holbrook  v.  Nesbit.  Mass.  175. 

163  Mass.  120;  39  N.  E.  Rep.  794;  82— Allan   on  Goodwill,  p.  32. 

Grimm  v.  Walker,   45   Iowa,   106;  83— Hoxie  v.  Chaney,  143  Mass. 

Smith   V.    Gibbs,    44    N.     H.     335;  592-597,  10  N.  E.  Rep.  713;   Hall's 

Moody  V.  Thomas,  1   Disney  294;  Appeal,  60  Pa.   458,  100  Am.  Dec. 

Washburn  v.   Dosch,   68  Wis.  436,  584;    Knoedler   v.    Glaenzer,    5    C. 

32    N.   W.   Rep.    551;    Bradford   v.  C.  A.  305,  55  Fed.  Rep.  895. 
Peckham,  9   R.   I.    ?.oO;     Rupp    v. 


§  85]  GOODWILL.  199 

stitute  such  unfair  competition  must  be  determined  in 
the  light  of  all  the  facts  in  each  particular  case. 

§  85.  Covenants  not  to  re-engage  in  business.— As  we 
have  seen,  tiie  mere  sale  of  a  goodwill  does  not  carry 
with  it  by  implication  a  covenant  that  the  vendor  will 
not  re-engage  in  the  same  business.  Consequently,  such 
covenants  nmst  be  expressed  in  tenns,  and  the  construc- 
tion of  such  covenants  is  a  matter  of  law.  While,  as  we 
have  seen,  the  goodwill  itself  will  be  passed  by  the  con- 
veyance of  the  business,  without  special  mention,  the 
agreement  of  the  vendor  not  to  re-engage  in  the  same 
business  should  be  as  explicit,  both  as  to  time  and  as 
to  the  territory,  as  the  circumstances  of  the  case  will 
permit.  A  frequent  defense  to  an  action,  based  u^jon  cove- 
nants not  to  re-engage  in  business,  is  that  the  contract 
is  void  at  common-law  as  being  an  unreasonable  re- 
straint of  competition  in  trade.  The  general  rule  of 
the  common-law  is  stated  by  Mr.  Bishop  to  be  as  fol- 
lows: **An  agreement,  without  limitation,  not  to  carry 
on  a  particular  trade,  which  is  lawful  and  beneficial  to 
the  community  and  to  the  individual,  is  void  as  against 
public  policy.  "^^ 

A  covenant  not  to  re-engage  in  business  will  not  be 
implied  from  the  vendor's  covenant  in  the  bill  of  sale 
**to  warrant  and  defend  the  sale  of  the  said  property 
and  interest,  as  herein  stated.  "^^ 

84 — Bishop  on  Contracts,  Section  of  furniture  so  long'  as  said  Bagby 

515.  continue    such    business,"    it    was 

85 — Costello  V.   Eddy,  12    N.    Y.  held    that    Bagby's    conveyance    of 

Supp.  236.     Agreements  upon  dis-  the  business  to  a  corporation  was 

solution  are  construed  by  the  same  a   discontinuance   of    the   business 

rules   as   other   contracts,    with   a  by   him,   and   Rivers   was   entitled 

view  of  ascertaining  the  actual  in-  to   resume   the   furniture   business 

tent   in  the  minds  of  the  parties,  if  he  saw  fit.  Bagby  &  Rivers  Co.  v. 

Thus  in  a  covenant  which  read  Rivers,  87  Md.  400;  40  L.  R.  A.  632. 
"the  said  Rivers  covenants  that  he         86 — Welz  v.  Rhodius,  87  Ind.  1; 

will  not  engage  in  the  manufacture  Spier  v.  Lambdin,  45  Ga.  319. 


200  HOPKINS   ON   TRADEMARKS.  [§85 

A  verbal  agreement  not  to  engage  in  a  rival  business 
does  not  come  within  the  statute  of  frauds.  It  may  be 
valid  when  made  as  collateral  to  and  distinct  from  a 
lease  of  premises,  provided  the  parol  agreement  is  made 
in  consideration  of  the  execution  of  the  written  lease.^^ 
But  in  an  action  at  law  upon  a  contract  of  sale,  such 
collateral  parol  agreement  cannot  be  shown  or  recov- 
ered on.^^ 

A  contract  not  to  re-engage  in  business  must,  like 
any  other  contract,  be  founded  on  a  sufficient  considera- 
tion or  it  will  not  be  enforced.^^  And  the  plaintiff  in 
an  action  upon  such  a  contract  must  not  be  guilty  of 
any  breach  on  his  part,  or  he  will  be  denied  relief  in 
equity.^^ 

A  covenant  not  to  re-engage  in  business  may  not 
specify  the  territory  in  which  the  vendor  is  precluded  from 
doing  business.  If  from  all  the  circumstances  of  the 
case  it  appears  that  it  was  the  intention  of  the  party  to 
limit  the  territory  to  a  town,  county  or  state,  the  con- 
tract will  be  so  construed,  and  the  vendor  will  be  en- 
joined from  continuing  or  re-entering  business  in  the 
territory  so  fixed.^^ 

The  courts  of  late  years  have  relaxed  the  old  rules 
so  that  the  restrictive  covenant  may  be  unlimited  as  to 
area.  "It  cannot  be  said  that  the  early  doctrine  that 
contracts  in  general  restraint  of  trade  are  void,  with- 
out regard  to  circumstances,  has  been  abrogated.  But 
it  is  manifest  that  it  has  been  much  weakened,  and  that 
the  foundation  upon  which  it  was  originally  placed  has, 
to  a  considerable  extent  at  least,  by  the  change  of  cir- 
cumstances, been  removed.  "^^ 

87— Costello  V.   Eddy,   12  N.    Y.  lis  v.  Shaffer,  38  Kas.  492;  Johnson 

Supp.  236;    Herbert  v.  Dupaty,  42  v.  Moss,  45  Cal.  515. 
La.  Ann.  343.  90— Hubbard  v.  Miller,  27  Mich. 

88 — Onondaga  Co.  Milk  Associa-  15. 
tion  V.  Wall,  17  Hun,  494.  91 — Andrews,    J.,     in     Diamond 

89— Cassldy   v.    Metcalf,     1     Mo.  Match    Co.    v.    Roeber,    106    N.    Y. 

App.  593-601;  s.  c.  66  Mo.  519;  Hoi-  473-484.       The  cases  are  reviewed 

at  length  in  this  opinion. 


§  85]  GOODWILL.  201 

The  subject  of  contracts  in  restraint  of  trade  is  out- 
side of  the  scope  of  this  book,  but  the  following  extract 
from  the  opinion  of  Mr.  Justice  liradley  concisely  cov- 
ers the  principles  which  govern  the  construction  of  all 
covenants  of  the  kind  under  consideration:  ** There  are 
two  principal  grounds  on  which  the  doctrine  is  founded, 
that  a  contract  in  restraint  of  trade  is  void  as  against 
public  policy.  One  is,  the  injury^  to  the  public  by  being 
deprived  of  the  restricted  party's  industry;  the  other 
is,  the  injury  to  the  party  himself  by  being  precluded 
from  pursuing  his  occupation  and  thus  being  prevented 
from  supporting  himself  and  his  family.  It  is  evident 
both  these  evils  occur  when  the  contract  is  general,  not 
to  pursue  one's  trade  at  all,  or  not  to  pursue  it  in  the 
entire  realm  or  country^  The  country  suffers  the  loss 
in  both  cases;  and  the  party  is  deprived  of  his  occupa- 
tion, or  is  obliged  to  expatriate  himself  in  order  to  fol- 
low it.  A  contract  that  is  open  to  such  grave  objection 
is  clearly  against  public  policy.  But  if  neither  of  these 
evils  ensue,  and  if  the  contract  is  founded  on  a  valid 
consideration  and  a  reasonable  ground  of  benefit  to  the 
other  party,  it  is  free  from  objection  and  may  be  en- 
forced. 

''In  accordance  with  these  principles  it  is  well  settled 
that  a  stipulation  by  a  vendee  of  any  trade,  business  or 
establishment,  that  the  vendor  shall  not  exercise  the 
same  trade  or  business,  or  erect  a  similar  establishment 
within  a  reasonable  distance,  so  as  not  to  interfere  with 
the  value  of  the  trade,  business  or  thing  purchased,  is 
reasonable  and  valid.  In  like  manner  a  stipulation  by 
the  vendor  of  an  article  to  be  used  in  a  business  or 
trade,  in  which  he  is  himself  engaged,  that  it  shall  not 
be  used  within  a  reasonable  region  or  distance,  so  as 
not  to  interfere  with  his  said  business  or  trade,  is  also 
valid  and  binding.  The  point  of  difficulty  in  these  cases 
is  to  determine  what  is  a  reasonable  distance  within 
which   the   prohibitory  stipulation   may  lawfully  have 


202 


HOPKINS   ON   TRADEMARKS.  [§85 


effect.  And  it  is  obvious,  at  first  glance,  that  this  must 
depend  upon  the  circumstances  of  the  particular  case; 
although,  from  the  uncertain  character  of  the  subject, 
much  latitude  must  be  allowed  to  the  judgment  and  dis- 
cretion of  the  parties.  It  is  clear  that  a  stipulation 
that  another  shall  not  pursue  his  trade  or  employment 
at  such  a  distance  from  the  business  of  the  person  to 
be  protected,  as  that  it  could  not  possibly  affect  or  in- 
jure him,  would  be  unreasonable  and  absurd.  On  the 
other  hand,  a  stipulation  is  unobjectionable  and  binding 
which  imposes  the  restraint  to  only  such  an  extent  of 
territory  as  may  be  necessary  for  the  protection  of  the 
party  making  the  stipulation,  provided  it  does  not  vio- 
late the  two  indispensable  conditions,  that  the  other 
party  be  not  pi-evented  from  pursuing  his  calling,  and 
that  the  country  be  not  deprived  of  the  benefit  of  his 
exertions."^ 

The  covenant  not  to  re-engage  in  business  may  be 
entered  into  by  the  stock  holders  of  the  corporation, 
whose  capital  stock  and  goodwill  is  being  conveyed  to 
a  purchaser.  The  sale  of  the  stock  alone  does  not  carry 
with  it  by  implication  a  covenant  not  to  re-engage;  in- 
deed, the  California  conrt  has  held  in  a  case  where  the 
covenant  not  to  re-engage  was  supported  only  by  the 
sale  of  stock  in  a  corporation,  that  as  the  sale  of  the 
stock  could  not  carry  with  it  the  goodwill  of  the  corpo- 
ration, the  element  of  goodwill  did  not  enter  into  the 
transaction,  and  the  covenant  was  void  as  being  in  re- 
straint of  trade.^ 

The  following  agreement  of  stock  holders  made  col- 
laterally with  the  sale  of  the  business  and  goodwill  of 
their  corporation  contains  a  typical  covenant  of  the 
kind  under  consideration:  ''This  instrument  witnes- 
seth,  that  William  Vernon  Booth  has    purchased    the 

l_Oregon  Steam  Nav.  Co.  v.  2— Merchants'  Ad-Sign  Co.  v. 
Windsor,   20   Wall.,   64-72.  Sterling,  124  Cal.  429. 


§  85 J  GOODWILL.  203 

plant,  business  and  goodwill  of  the  business  of  the 
Davis  Fresh  &  Salt  Fish  Co.,  and  has  paid  therefor  the 
sum  of  $17,473.14;  that  in  making  said  transfer,  and  as 
an  inducement  to  said  William  Vernon  Booth  to  pur- 
chase said  plant,  business  and  goodwill  and  pay  the 
sum  aforesaid  for  the  same,  we  each  have  agreed  that 
we  would  not,  and  we  now  do  agree,  each  for  himself, 
jointly  and  severally  with  him,  the  said  William  Ver- 
non Booth,  his  heirs  and  assigns,  forever,  that  we  will 
not  during  the  next  ten  years,  in  the  territory  or  the 
immediate  vicinity  of  the  territory  dealt  in  by  our  com- 
pany, engage  or  in  any  manner  be  interested  in,  either 
directly  or  indirectly,  for  ourselves  or  for  others,  the 
same  or  like  kind  or  character  of  business  as  that  here- 
tofore conducted  and  now  being  carried  on  by  said  com- 
pany, its  officers,  agents,  employees  and  assigns,  and 
that  we  will  not,  during  the  said  period  of  ten  (10) 
years,  either  directly  or  indirectly,  be  guilty  of  any  act 
interfering  with  the  business,  its  goodwill,  its  trade  or 
its  customers,  or  come  in  competition  with  the  same; 
and  we  will  not,  jointly  or  severally  either  in  firms  or 
corporations,  or  as  individuals  or  in  any  other  way, 
directly  or  indirectly  interfere  with  the  said  trade  or 
business,  or  do  any  act  prejudicial  to  the  same  or  any 
part  thereof,  or  interfere  with  the  persons  employed 
therein;  the  meaning  hereof  being  that  the  said  Wil- 
liam VeiTion  Booth  is  buying  and  paying  for  the  good- 
will of  the  business  in  the  largest  and  fullest  scope  of 
the  term;  and  that  we  will  not,  and  each  agi-ees  that  he 
will  not,  do  anything  to  interfere  with  or  injure  the 
said  business,  but  will  during  said  period,  lend  his  aid 
and  best  influence  to  the  promotion  and  advancement 
of  the  same." 

It  was  urged  in  defense  of  a  bill  filed  by  the  pur- 
chaser to  restrain  the  share  holders  from  the  viola- 
tion of  this  agreement,  that  it  was  void  because  in  vio- 
lation of  the  Anti-Trust  Act  of  July  21,  1890.    This  de- 


204  HOPKINS   ON   TRADEMARKS.  [§  86 

fense  did  not  prevail  because  the  contract  did  not  have, 
upon  its  face,  a  direct  relation  to  interstate  commerce. 
It  was  further  urged  that  the  covenant  was  void  of 
common-law  because  it  was  an  unreasonable  restraint  of 
competition  in  trade.  This  defense  also  failed,  inas- 
much as  the  covenant  was  merely  ancillary  to  the  con- 
veyance of  the  goodwill  of  the  corporation.  The  gen- 
eral rule  was  announced  by  the  court  ''that  such  stipu- 
lation is  valid  if  it  goes  no  farther  than  to  support  and 
protect  the  interests  transferred  by  the  contract  of  sale.^ 

§  86.  The  vaJuation  of  goodwill.— It  is  manifestly  a 
matter  of  great  difficulty  to  secure  an  accurate  valua- 
tion of  goodwill.  Like  a  trademark  it  has  no  value 
except  as  an  integral  portion  of  the  business  with  which 
it  is  connected,  and  of  which  it  is  a  part.  We  have  con- 
sidered some  of  the  things  that  enter  into  goodwill,  and 
it  is  obvious  that  its  value  is  a  thing  entirely  independ- 
ent of  the  cash  value  of  the  physical  assets  of  the  busi- 
ness of  which  it  is  a  part.  In  fact,  goodwill  is  fre- 
quently sold  at  a  valuation  far  in  excess  of  the  total 
value  of  all  of  the  physical  properties  of  the  business. 
On  the  other  hand,  the  value  of  a  goodwill  is  liable  to 
sudden  and  violent  fluctuation  as  is  the  value  of  a 
trademark. 

A  single  shipment  of  inferior  goods  may  render  the 
trademark  under  which  they  are  packed,  a  thing  of  no 
value,  and  personal  goodwill  depends  for  its  value  upon 
the  continued  activity  and  integrity  of  the  person  or 
persons  to  whom  it  belongs. 

Concerning  the  valuation  of  the  goodwill  of  a  part- 
nership, the  Massachusetts  court  has  said,  "While  no 
rule  can  be  laid  down  by  which  the  goodwill  of  a  trad- 
ing partnership  in  all  cases  can  be  ascertained  and  its 
value  fixed  with  mathematical  precision  and  accuracy, 

3— Severens,  J.,    :n   Davis  v.   A.  Booth  &  Co.,  65  C.  C.  A.  269,  131 
Fed.  Rep.  31,   38. 


§  86]  GOODWILL.  205 

yet  if  it  be  assumed  that  a  finn  has  been  in  existence  for 
a  time  long  enough  to  establish  a  business  suflSciently 
permanent  in  character  to  include  not  only  its  cus- 
tomers, but  the  incidents  of  locality,  and  a  distinctive 
name,  these  advantages  constitute  a  going  business 
enterprise;  and  it  may  then  be  said  that  the  name  and 
what  is  done  under  it  go  together,  and  a  goodwill  exists 
which  forms  an  asset  of  commercial  value  in  a  winding 
up  between  partners.  The  fact  that  such  an  asset  may 
be  difficult  of  appraisement  is  no  legal  reason  for  deny- 
ing to  the  retiring  partner  an  appraisal,  if  it  be  proved 
that  he  is  entitled  to  it."* 

An  English  text  writer  says,  ''The  usual  basis  of 
valuation  is  the  average  net  profits  made  during  the 
few  years  preceding  the  sale,'"^  and  in  accordance  with 
this  rule,  an  English  court  has  assessed  the  value  of 
the  goodwill  of  a  banking  business  at  one  year's  aver- 
age net  profits.'' 

The  value  of  the  goodwill  of  a  professional  practice 
has  been  based  upon  two  years'  net  profits.'^ 

It  is  evident  that  all  the  facts  relating  to  the  char- 
acter of  the  goodwill,  the  probability  of  the  continuance 
of  its  value,  and  any  other  matters  which  render  its 
duration  a  matter  of  doubt  or  certainty,  must  be  con- 
sidered in  an  attempt  to  place  a  value  upon  it.  Thus, 
where  the  goodwill  was  being  conveyed  in  administra- 
tion, the  fact  that  the  brother  of  the  testator  had  been 
interested  in  the  business,  and  could  not  be  prevented 
from  carrying  it  on  in  competition  with  a  purchaser, 
rendered  the  goodwill  valueless  as  a  subject  of  sale  by 
the  executor.^     In  estimating  the  value  of  the  interest 

4 — Moore  v.  Rawson,  185  Mass.  6 — Mellersh  v.  Keen,  28  Beav. 
264.  70  N.    E.   Rep.   64,  citing  Mc-     453. 

Murtrie  v.  Guiler,  183  Mass.  451,  7 — Featherstonhaugh  v.  Turner. 
454,   67  N.   E.  Rep.   358.  25  Beav.  382. 

5 — Allan  on  Goodwill,  page  82.  8 — Davies  v.   Hodgson,  25   Beav. 

177. 


206  HOPKINS   ON    TRADEMARKS.  [§  87 

of  a  deceased  partner  in  the  goodwill  of  the  business, 
the  rights  of  the  surviving  partner  must  be  taken  into 
account.* 

§  87.     Competition  between  vendor  and  vendee.— The 

vendor  is  at  liberty  to  lease  or  sell  other  property  he 
may  own  in  the  neighborhood,  to  another  person  who 
may  carry  on  the  same  business,  provided  there  is  no 
collusion,  and  the  lessor  has  no  interest  in  the  busi- 
ness.''^ 

In  the  absence  of  a  covenant  or  statute  to  the  con- 
trary, the  vendor  may  employ  any  fair  method  of 
soliciting  trade  which  does  not  involve  a  false  or  frau- 
dulent representation.^^  But  the  English  rule  and  that 
in  Eliode  Island  is  that  he  cannot  directly  solicit  from 
former  customers.'^  No  form  of  soliciting  trade  will 
be  permitted  however  which  tends  directly  to  deprive 
the  vendee  of  the  benefit  of  the  reputation  of  the  busi- 
ness purchased  by  him,  to  take  away  from  him  the 
patronage  which  appertained  to  it,  or  to  draw  away  the 
business  of  its  habitual  customers.^  ^ 

The  goodwill  of  the  business  of  a  decedent  does  not 
carry  with  it  the  right  to  use  the  decedent's  name.^^ 
Such  goodwill  is  an  asset  to  be  accounted  for  by  the 
personal  representative,  and  if  that  representative  takes 

9 — Smith  V.   Everett,    27    Beav.  Rep.  283;  Knoedler  v.  Glaenzer,  55 

446.  Fed.  Rep.  895,  5  C.  C.  A.  305. 

10— Bradford  v.    Peckham,  9   R.  12— Trego  v.  Hunt,  65  L.  J.  Ch. 

I.   250-253;    Herbert  v.   Dupaty,  42  1;    L.  R.    (1896)   A.  C.  7;   12  Eng. 

La.   Ann.    343.  Ruling  Cases,  442;    Labouchere  v. 

11— Holbrook     v.     Nesbitt,     163  Dawson,  L.  R.  13  Eq.  322;  Zantur- 

Mass.  120;   39  N.  E.  Rep.  794,  Cot-  jian  v.   Boornazian,  R.   I.,  55  Atl. 

trell    V.    Babcock,  54    Conn.     138;  Rep.  199. 

Vonderbank  v.  Schmitt,  44  La.  Ann.  13— Munsey    v.   Butterfield,    133 

264;   Marcus  Ward  &  Co.  v.  Ward,  Mass.    492-495.      Citing    Angier    v. 

40   N.   Y.   State  Rep.   792;    Knoed-  Webber,  14  Allen  211. 

ler  V.  Boussod,  47   Fed.  Rep.  465;  14 — Morgan  v.  Schuyler,  79  N.  Y. 

Close  V.   Flesher.    59   N.   Y.    State  490;   Re  Randall's  Estate,  8  N.  Y. 

Supp.    652-654. 


§  87]  GOODWILL.  207 

charge  of  the  business  and  conducts  it  as  his  own  he  is 
chargeable  with  the  value  of  the  goodwill.^*^ 

Equity  looks  with  disfavor  upon  any  method  of 
diverting  from  the  purchaser  of  a  goodwill  the  benefits 
which  ought  to  come  to  him  by  reason  of  his  purchase. 
Thus,  where  partners  sold  out  their  interest  in  the 
goodwill  of  a  partnership  known  as  the  Kalamazoo 
Wagon  Company,  and  then  organized  a  corporation 
under  the  name  of  Kalamazoo  Buggy  Company,  they 
were  enjoined,  at  the  suit  of  their  vendee,  from  the 
use  of  that  name;  and  the  court  held  that  the  writ  of 
injunction  properly  ran  against  all  persons  connected 
with  the  corporation,^"^ 

A  statute  of  California  provides  that  "One  who  sells 
the  goodwill  of  a  business  thereby  warrants  that  he  will 
not  endeavor  to  draw  off  any  of  the  customers."^" 

In  another  case  one  Thomson  was  a  partner  of  his 
brother,  in  Europe,  and  a  partner  of  other  persons  in  a 
separate  establishment  in  New  York.  Both  houses  were 
dealing  in  "Thomson's  Glove-fitting"  corsets.  Thomson 
sold  out  his  interest  in  the  New  York  house  and  after- 
ward attempted  to  sell  the  corsets  made  by  him  in  Eu- 
rope, in  the  United  States.  He  was  enjoined  from  so 
doing,  the  court  holding  that,  when  he  assigned  his  in- 
terest in  the  goodwill  of  the  New  York  partnership,  the 
good-will  carried  with  it  all  his  right  to  use  the  trade- 
mark "Thomson's  Glove-fitting"  in  the  United  States.^^ 

In  a  sale  of  a  physician's  practice,  where  the  vendor, 
after  three  months,  returned  to  the  same  city  and  opened 
an  oflSce  fifteen  rods  away  from,  in  the  nearest  house 
but  one  to,  his  former  office,  the  supreme  court  of  Massa- 
chusetts held  his  conduct  to  be  a  breach  of  the  implied 
covenant  "that  the  vendor  will  not  himself  do  anything 

IT)— Re  Randall's  Estate,  8  N.  Y.  115;    19  L.  R.  A.  82. 

Supp.  652.  17— Cal.  Civ.  Code  §1776;    Snow 

Ifi— Myers  v.   Kalamazoo  Buggy  v.  Holmes,  71  Cal.  142. 

Co.,   54   Mich.   215;    Brass   &    Iron  18— Batchellor    v.    Thomson,    86 

Works   Co.  V.  Payne,   50  Ohio  St.  Fed.  Rep.  630. 


208  HOPKINS   ON    TRADEMARKS.  [§  87 

to  disturb  or  injure  the  vendee  in  the  enjoyment  of  that 
which  he  has  purchased.  "^^ 

When  an  article  of  manufacture  has  had  the  manu- 
facturer's name  applied  to  it,  and  he  sells  his  business 
and  goodwill  and  ''confers  the  authority  to  use  his 
name,"  so  ajiplied,  to  his  vendee,  he  will  be  enjoined 
from  again  engaging  in  a  similar  business  under  his 
own  name.-^ 

A  covenant  by  the  vendor  not  to  re-engage  in  busi- 
ness may  not  specify  the  territory  in  which  he  is  pre- 
cluded from  doing  business.  If  from  all  the  circumstances 
of  the  case  it  appears  that  it  was  the  intention  of  the  par- 
ties to  limit  that  territory  to  a  town,  county  or  state, 
the  contract  will  be  so  construed,  and  the  vendor  will 
be  enjoined  from  continuing  or  re-entering  business  in 
the  territory  so  fixed.-^  A  single  act  or  sale  in  the  line 
of  the  business  sold  is  not  a  breach  of  a  covenant  not  to 
re-engage  in  a  particular  ''business,"  as  business  is  car- 
ried on  by  an  aggregation  of  acts.-- 

A  vendor  of  a  good-will  may  not  do  indirectly  what 
he  is  forbidden,  by  the  terms  of  his  contract,  from  doing 
directly.  So  if  he  form  a  corporation  to  carry  on  his 
business,  and  the  other  incorporators  have  knowledge 

19 — Endicott,  J.,    in    Dwight    v.  court  of  equity  when  asking  its  as- 

Hamilton,  113  Mass.  175-177.  Where  sistance."     Cassidy  v.   Metcalf,   65 

the  vendor  re-engaged  in  the  same  Mo.  519. 

(a   mercantile)     business    in    the  20 — Frazer  v.  Frazer  Lubricator 

same  vicinity,    a    bill     in     equity  Co.,  121  111.  147,  13  N.  B.  Rep.  639; 

brought  by  him  to  reform  the  con-  Ayer  v.  Hall,  3   Brewst.  509;   Fil- 

tract  of  sale  was  dismissed  on  the  kins   v.   Blackman,  Fed.  Case  No. 

ground    that     he     had     not     done  4786,  13   Blatch.  440;    Probasco  v. 

equity.    Cassidy  v.    Metcalf,  1  Mo.  Bouyon,  1  Mo.  App.  241. 

App.    593-601.      This    decision   was  21— Hubbard  v.  Miller,  27  Mich, 

reversed  by  the  supreme  court  of  15. 

Missouri,    but    that    court    agreed  22 — Parkhurst  v.   Brock,   Vt.   47 

with    the    St.   Louis   court   of   ap-  Atl.  Rep.  1068;    oiting  Hoagland  v. 

peals  in  holding  that  "the   plain-  Segur,  38  N.  J.  Law  237;   Turner 

tiff's  conduct  was  not  characterized  v.  Evans,  2  El.  &  El.  512;  Re  Hor- 

by  that  good   faith  with  which  a  ton,  45  Law  T.  (N.  S.)  541. 
party   should   always    approach   a 


§  87  j  GOODWILL.  209 

of  Lis  contract,  the  corporation  will  be  enjoined  from 
conducting  business  with  or  for  the  vendor.*''  And  he 
is  not  at  liberty  to  take  stock  in  or  to  help  to  organize  or 
manage  a  corporation  formed  to  compete  with  his  ven- 
dee,-' nor  may  he  deliver  goods  within  the  proliibited 
territoiy,  although  maintaining  his  store  and  making 
the  sales  without  that  •territoiy.^'^ 

If  he  re-engages  in  business  under  the  pretense  of 
acting  as  a  broker  or  commission  agent  only,  the  same 
rule  applies  and  he  will  be  enjoined.-*^  And  again,  the 
rule  applies  where  the  defendant  re-engages  in  the  pro- 
hibited busness  as  the  salaried  employee  of  a  third  per- 
son, and  he  will  be  enjoined.^^  In  a  case  where  the 
vendor  covenanted  to  make  the  goodwill  as  valuable 
as  he  could.  Lord  Eldon  held  that  the  vendee  was  not 
bound  to  take  the  actual  profit  made,  but  that  he  would 
''have  an  action  of  covenant,  if  he  can  establish  his 
title  to  more  through  the  default  of  the  vendor."-'^ 

Where  a  limit  of  time  is  fixed  in  the  covenant  against 
re-engaging  in  business,  the  vendor  may  re-engage  in 
the  business  upon  the  expiration  of  the  time.  But  where 
the  covenant  was  made  jointly  with  a  conveyance  of 
the  vendor's  good-will,  he  was  restrained  after  he  re- 
engaged in  business  from  making  personal  solicitation 
of  his  foiTaer  customers  and  using  extracts  from  their 
books  in  relation  to  the  business.-'' 

23— Beal  v.  Chase,  31  Mich.  490.  Battershell  v.  Bauer,  91   111.   App. 

24— Kramer  v.  Old,  119  No.  Car.  181. 
1;    56  Am.  St.  Rep.  650.  28— Scott  v.  Mackintosh,  1  V.  & 

25— Love  V.  Stidham,  18  App.  D.  B.    503.     As    a    matter   of    course 

C.  306.  such  a  covenant  will  not  be  created 

26 — Richardson  v.  Peacock,  33  N.  by  implication.    Where  the  vendor 

J.   Eq.   597.  conveyed  the  good-will  of  a  school, 

27— Finger  v.  Hahn,  42  N.  J.  Eq.  it  was  held  that  the  sale   did  not 

606.    Emery  V.  Bradley,  88  Me.  357;  bind  him   by   implication  to  exert 

34  Atl.  Rep.  167;   Meyer  v.  Labau,  his  efforts  thereafter  to  secure  the 

51   La.   Ann.     1726;      Boutelle     v.  attendance   of  pupils.     McCord   v. 

Smith,  116  Mass.  Ill;  Jefferson  -'.  Williams,  96  Pa.  St.  78. 
Markert,  112  Ga.  498.  37  S.  E.  Rep.         29— Armstrong  v.  Bitner,  71  Md. 

758.     Opposed   to   these  cases   see  118-127, 
14 


210  HOPKINS   ON    TRADEMARKS.  [§  88 

The  sale  of  a  business  and  its  goodwill  do  not,  in 
the  absence  of  an  express  agreement,  entitle  the  pur- 
chaser to  use  the  vendor's  name,  even  where  he  cove- 
nants not  to  re-engage  in  the  business  for  a  term  of 
years.^*^ 

§88.  Partnership  goodwill.— Disputes  as  to  good- 
will arise  most  frequently  between  partners.  The  vari- 
ous text-writers  who  have  treated  the  law  of  partner- 
ship have  dwelt  at  length  upon  the  principles  of  the  law 
of  goodwill  which  are  applicable  in  this  connection,  so 
that  for  the  purj^ose  of  this  book  a  brief  glance  at  the 
leading  principles  will   suffice. 

As  we  have  seen  elsewhere,  every  man  has  the  right 
to  use  his  own  name  in  business,  so  long  as  he  does  not 
use  it  in  such  a  way  as  to  establish  an  unfair  competi- 
tion. 

The  use  of  the  name  of  a  withdrawing  partner,  as 
part  of  the  firm  name,  in  such  a  way  as  to  expose  him 
to  liability  or  to  the  possibility  of  being  sued,  will  be 
enjoined  at  his  suit.^^  The  better  rule  would  seem  to 
be  that  in  the  absence  of  express  agreement  the  firm 
name  will  not  pass  to  one  who  purchases  the  assets  of  a 
partnership.^- 

30 — Scheer  v.  American  Ice  Co.,  ties;    and  that  a  purchaser  thereof 

66  N.  Y.  Supp.  3.  under  either  method  of  sale  is  en- 

31 — McGowan    v.    McGowan,    22  titled  to  continue  the  business  as 

Ohio    St.   370;    Peterson  v.     Hum-  the  successor  of  the  firm,  and  make 

phrey,  4  Abb.  Pr.  394.  use  of  the  firm  name  for  that  pur- 

32 — Williams  v.  Farrand,  88  Mich.  pose.    And  further,  that  when  the 

473;    50  N.  W.  Rep.   446.     Horton  purchaser    transfers    the    property 

Mfg.    Co.   V.   Horton   Mfg.   Co.,   18  so  acquired  by  him  to  a  corporation 

Fed.  Rep.  816.    This  rule  is  not  yet  of  which  he  is  a  member,  organ- 

clearly  established.     Thus  the  su-  ized  to  succeed  to  the  business,  it 

preme  court  of  Ohio  says:     "Upon  may  carry  on  the  business  in  the 

the  dissolution  of  a  trading  copart-  same   manner   under    a   corporate 

nership   its  assets,    including    the  name,  including   the   name  which 

good-will  of  the  business,  may  be  has  been  used  by  the  firm."    Wil- 

sold  as  a  whole,  either  by  the  part-  liams,  J.,  in    Snyder    Mfg.  Co.   v. 

ners  directly,  or  through  a  receiv-  Snyder,  54  Ohio  St.  86-96;    43  N.  E. 

er  under  an  order  made  by  a  court  Rep.  325,  citing  Brass  &  Iron  Works 

in  a  case  to  which  they  are  par-  v.  Payne,  50  Ohio  St.  115. 


§  88]  GOODWILL.  211 

When  one  partner  has  been  expelled  from  the  part- 
nership because  of  his  violation  of  its  articles,  he  will 
not,  in  the  absence  of  contract  binding  him  not  to  re- 
engage in  the  business,  be  enjoined  from  doing  similar 
business  iin  his  own  name,  and  soliciting  patronage  from 
customers  of  the  old  firm/''*  A  surviving  partner  who 
lias  the  right  to  use  the  firm  name  may  enjoin  his  de- 
ceased partner's  executor  from  using  the  firm  name  for 
his  own  benefit."'^ 

Upon  the  appointment  of  a  receiver  for  the  finn  as- 
sets, either  member  of  the  firm  will  be  enjoined  from 
so  using  his  own  name  as  to  mislead  the  public  into 
the  belief  that  he  has  acquired  the  goodwill,  since  such 
injunction  is  necessary  to  the  presei-vation  of  the  good- 
will as  part  of  the  firm  assets.^'' 

A  retiring  partner  who  has  sold  the  other  the  firm 
property,  without  making  mention  of  the  goodwill,  will 
be  granted  an  injmiction  against  any  use  of  the  firm 
name  by  the  continuing  partner  which  would  give  the 
public  reason  to  believe  he  was  still  a  member  of  the 
firm,  to  the  injury  of  his  new  business.^® 

Upon  the  dissolution  of  a  partnership  the  partner 
who  retains  the  use  of  the  old  premises  may  lawfully 
advertise  the  premises  as  being  ''formerly  occupied  by" 
the  old  finn,  and  either  partner  may  advertise  himself 
as  being  "formerly  of"  or  ''late  of"  the  firm,  using 
words  that  convey  only  the  facts  and  have  no  tendency 


33 — Dawson  v.  Beeson,  L.  R.  24  of  the  right   to    use   the   name   is 

Ch.  D.  504.  personal  and  cannot  be  transferred 

34 — Lewis    v.    Langdon,    7    Sim.  by   the   continuing  partner   to   an- 

422.  other.     Horton  Mfg.  Co.  v.  Horton 

35— Bininger  v.  Clark,  60  Barb.  Mfg.  Co.,  18  Fed.  Rep.  816;   Bagby 

113.     Where     a     retiring    partner  &  Rivers  Co.  v.  Rivers,  87  Md.  400; 

stipulated  that  the  continuing  part-  40  L.  R.  A.  632. 
ner  might  continue  the  use  of  his        36 — McGowan    v.    McGrOwan,    22 

name  in  the  style  of  the  firm,  it  Ohio  St.  370. 
has  been  held  that  the  assignment 


212  HOPKINS   ON    TRADEMARKS.  [§  88 

to  deceive  or  mislead  the  firm's  customers  or  the  public 
generally.^^ 

Where  the  retiring  partner  permits  the  old  firm  name 
(of  which  his  name  is  a  part)  to  be  used,  and  makes  no 
publication  of  the  fact  of  his  retirement,  he  is  estopped 
from  denying  the  copartnership,  as  against  a  creditor 
of  the  continuing  partner,  who  has  extended  credit  in 
the  belief  that  he  is  still  a  member  of  the  firm.^^ 

Upon  administration  of  a  partnership  estate,  the 
goodwill  should  be  included  in  the  appraisement  of  the 
partnership  assets,  and  if  the  surviving  partner  appro- 
priates it  to  his  own  use  by  continuing  the  partnership 
business,  he  may  be  compelled  to  account  for  its  value 
to  the  estate  of  the  deceased  partner.^^ 

^Yhere  a  partner  came  into  a  partnership  for  a  fixed 
period,  agreeing,  *'to  carry  on  business  with  the  defend- 
ants for  one  year,  and  then  to  leave  it  in  their  hands," 
he  was  held  to  have  acquired  thereby  no  interest  in  the 
goodwill  of  the  business.''*' 

Upon  the  retirement  of  a  partner,  if  he  permits  the 
other  partners  to  retain  the  old  premises  and  continue 
the  use  of  the  firm  name,  the  goodwill  remains  with 
the  continuing  partners.''^ 

A  retiring  partner  who  re-engages  in  business  will  be 
enjoined  from  using  the  expressions  ''our  firm",  "our 
new  store",  and  like  matter  holding  out  his  new  con- 
cern as  continuing  the  business  of  the  old  firm.^- 

37 — Morgan  v.  Schuyler,  79  N.  Y.  incoming  partner's  interest  should 

490;  Holbrook  v.  Nesbit,  163  Mass.  be  ascertained  annually,  and   fur- 

120,  39  N.  E.  Rep.  794.  ther  provided  for  the  sale  of  his 

38 — Backus    v.    Taylor,    84    Ind.  interest  to  his  partner  on  dissolu- 

503;  Richards  v.  Hunt,  65  Ga.  342.  tion   at   the   price    ascertained    in 

39 — Rammelsberg  v.  Mitchell,  29  determining  his  share.     The  court 

Ohio   St.    22.  held  that  this  disposed  of  his  prop- 

40 — Van  Dyke  v.  Jackson,  1  E.  erty   in  the   good-will. 

D.   Smith    (N.  Y.)    419;    Duden  v.  41— Menendez  v.  Holt,  128  U.  S. 

Maloy,  63  Fed.  Rep.  183;  11  C.  C.  514. 

A.  119.    In  the  latter  case  the  part-  42— Fite  v.  Dorman,  (Tenn.),  57 

nership  articles  provided  that  the  S.  W.  Rep.  129. 


§89]  GOODWILL.  213 

§89.  Remedies.— The  purchaser  of  a  good-will  whose 
enjoyment  of  it  is  interfered  with  may  have  his  remedy 
either  at  law  or  in  equity.  These  remedies  are  adminis- 
tered on  the  same  general  principles  which  apply  to 
other  cases  of  unfair  competition,  and  which  are  dis- 
cussed elsewhere  in  this  book. 

The  jurisdiction  of  equity  in  this  class  of  cases  is 
predicated  upon  the  fact  that  the  injury  is  continuing, 
that  its  further  operation  can  only  be  restrained  by  the 
exercise  of  the  injunctive  power  of  the  chancellor,  and 
that  damages  at  law  afford  no  adequate  compensation 
for  the  injuiy. 

If,  however,  the  plaintiff  resorts  to  an  action  at  law, 
the  measure  of  his  damages  is  well  defined  by  the  su- 
preme court  of  Missouri:  ''If  plaintiffs  lost  less  than 
the  defendant  made,  they  cannot  recover  the  whole  of 
defendant's  profits;  if  plaintiffs  lost  more  than  the  de- 
fendants made,  they  would  not  be  limited  to  defend- 
ant's profits.  What  the  plaintiffs  have  lost  by  the  de- 
fendant's breach  of  covenant,  and  not  what  the  de- 
fendant has  gained  thereby,  is  the  legal  measure  of  dam- 
ages in  this  case."^^ 

The  parties  to  a  contract  for  the  sale  of  a  goodwill 
may  provide  in  the  contract  for  a  fixed  amount  of  dam- 
ages. In  the  absence  of  fraud,  the  sum  so  fixed  will  be 
adopted  as  the  measure  of  damages  by  the  court.^" 
Where  the  parties  have  so  agreed  upon  the  amount  of 
damages,  the  vendee,  in  case  of  a  breach  of  covenant, 
has  an  adequate  remedy  at  law,  and  injunction  will  not 
lie.-*^  The  remedy  is  for  the  recovery  of  the  sum  so 
fixed.^^ 

43— Hough,  J.,  in  Peltz  v.  Eich-  ley  v.  Peddie,  16  N.  Y.  469;   Woos- 

ele,   62   Mo.    171-180.     And   to   the  ter  v.  Kisch,  26  Hun.  61. 

same     effect     see     Burckhardt    v.  45— Martin  v.  Murphy,  129  Ind. 

Burckhardt,  36  Ohio  St.  261.  464-467.     Unless  the  defendant    is 

44— Tode    v.    Gross,    127    N.    Y.  insolvent,  which  fact  will  make  a 

480-487,  13  L.  R.  A.  652,  28  N.  E.  case  for  injunctive  relief.     Pickett 

Rep.  469.  40  N.  Y.  S.  R.  300;  Dakin  v.   Green,    120   Ind.   584. 

V.  Williams,  17  Wendell,  447;    Bag-  The  general  doctrine  that  equity 


2U 


HOPKINS   ON    TRADEMARKS. 


[§89 


AVIiere  there  are  no  damages  stipulated,  and  no  sub- 
stantial injury  is  proven,  the  plaintiff  is  entitled  only 
to  nominal  damages.*'^  ''The  loss  of  profits,  if  there 
are  data  from  which  the  amount  may  be  ascertained 
with  reasonable  certainty,  the  diminution  in  value  of  the 
property  sold,  all  may  be  regarded  as  elements  of  the 
damages  which  go  to  make  up  the  measure  of  recov- 
eiy.  "■^^ 

Where  the  defendant  has  re-engaged  in  business  in 
violation  of  a  covenant  against  his  so  doing,  the  case  is 
one  where  ''the  law  will  not  nicely  attempt  to  limit  the 
amount  of  reparation,  but  will  extend  the  line  of  re- 
lief so  as  to  embrace  all  the  consequences  of  the  wrong- 
doer's act,  although  quite  remote  from  the  original 
transaction."^^     The  measure  of  the  vendee's  damages 


will  not  interfere  to  restrain  a  per- 
son from  doing  an  act  which  he 
has  agreed  not  to  do,  when  liquid- 
ated damages  have  been  provided 
in  case  he  does  the  act,  is  subject 
to  this  qualification.  "The  question 
in  every  case  is,  what  is  the  real 
meaning  of  the  contract?  And  if 
the  substance  of  the  agreement  :s 
that  the  party  shall  not  do  a  par- 
ticular act,  and  that  is  the  evident 
object  and  purpose  of  the  agree- 
ment, and  it  is  provided  that,  if 
there  is  a  breach  of  this  agreement, 
the  party  shall  pay  a  stated  sum, 
which  does  not  clearly  appear  to 
be  an  alternative  which  he  has  the 
right  to  adopt  instead  of  perform- 
ing his  contract,  there  would  seem 
to  be  no  reason  why  a  court  of 
equity  should  not  restrain  him 
from  doing  the  act,  and  thus  carry 
out  the  intention  of  the  parties. 
.  .  .  In  other  words^  naming  a 
sum  to  be  paid  as  liquidated  dam- 
ages does  not  in  itself  conclusively 
establish  that  the  parties  contem- 
plated the  right  to  do  the  act  upon 


payment  of  the  compensation,  and 
make  an  alternative  agreement  for 
the  benefit  of  the  party  who  has 
done  what  he  had  agreed  not  to 
do."  Edicott,  J.,  in  Ropes  v.  Upton, 
125  Mass.  -258-261.  It  has  been 
held  in  Canada  that  in  event  of  a 
breach  of  such  a  contract  the  ven- 
dee has  his  election  to  enjoin  the 
vendor  or  recover  the  amount 
named  as  liquidated  damages.  Sni- 
der V.  McKelvey,  27  Ont.  App.  339. 

46 — Martin  v.  Murphy,  129  Ind. 
464. 

47 — Taylor  v.  Howard,  110  Ala. 
468,  18  South.  Rep.  311. 

48 — Howard  v.  Taylor,  90  Ala. 
241-244;  and  to  the  same  effect  see 
Burckhardt  v.  Burckhardt,  42  Ohio 
St.  474,  Mitchell  v.  Read,  84  N.  Y. 
556;  Mellersch  v.  Keen,  28  Beavan, 
453;  Rawson  v.  Pratt,  91  Ind.  9; 
Lashus  V.  Chamberlain,  6  Utah, 
385;  Gregory  v.  Spieker,  110  Cal. 
150,  42  Pac.  Rep.  576. 

49— Dow  V.  Electric  Co.  (N.  H.) 
41  Atl.  Rep.  288,  42  L.  R.  A.  569. 


§89  J  GOODWILL.  215 

will  be  the  amount  of  profits  lost  during  the  term  by 
reason  of  defendant's  unlawful  competition,  and  if,  in 
addition,  the  goodwill  of  the  business  at  the  end  of  the 
term  is  worth  less  than  it  would  have  been  but  for  de- 
fendant's unlawful  act,  the  vendee  is  entitled  to  re- 
cover that  amount.^"  The  vendee  cannot  recover  the 
profits  realized  by  the  vendor  through  his  breach  of  the 
contract/*^ 

For  the  greater  irdi-i  the  remedies  open  to  the  owner 
of  a  goodwill  whose  rights  are  invaded  are  administered 
by  courts  of  equity.  But  injury  to  a  goodwill  may  be 
effected  in  many  various  ways,  for  each  of  which  an  ap- 
propriate remedy  will  be  found  either  at  law  or  in  equity. 
Thus  where  a  defendant's  goodwill  has  been  destroyed 
by  a  wrongful  attachment,  he  will  be  allowed  compensa- 
tion therefor  in  an  action  for  damages  against  the  at- 
taching creditor.^- 

In  an  action  at  law  a  petition  which  alleges  that 
plaintiff  has  purchased  defendant's  business  and  good- 
will, and  that  the  defendant  agreed  not  to  re-engage 
in  the  same  line  of  business  for  two  years,  and 
that  in  violation  of  his  agreement,  he  has  re-engaged 
in  the  same  line  of  business  during  such  jieriod,  and 
thereby  damaged  plaintiff,  has  been  held  good  on  de- 
murrer.'^^ 

The  action  for  damages  for  breach  of  contract  involv- 
ing goodwill  is  governed  by  the  general  principles  in- 
volved in  similar  actions  in  trademark  cases,  which  are 
considered  elsewhere  in  this  book. 

A  contract  for  the  sale  of  a  business  and  goodwill  will 
be  rescinded  if  the  vendor  has  falsely  stated  facts  in  re- 

50 — Salinger  v.   Salinger,  N.  H.,  51— Gregory  v.  Spieker,  110  Cal. 

45    Atl.    Rep.    558;    Buckhardt    v.  150,  42  Pac.  Rep.   576. 

Buckhardt,  36  Ohio  St.  261;  Verges  52— Miller  v.  Beck  (Iowa),  72  N. 

V.  Forshee,  9  La.  Ann.  294;  Stewart  W.  Rep.   553. 

V.   Challacombe,  11   111.  App.  379;  53— Erwin   v.    Hayden    (Texas), 

Moorehead  v.  Hyde,  38  Iowa  382.  43  S.  W.  Rep.  610. 


216  HOPKINS  ON  TRADEMARKS.  [§89 

gard  to  the  value  of  the  goodwill ;  as  where  he  has  rep- 
resented that  his  receipts  or  profits  from  the  business 
were  gi'eater  than  they  actually  had  been,^"*  or  that  the 
premises  sold  have  brought  a  higher  rental  than  they 
actually  did."^  And  the  misrepresentation  has  been  held 
to  rescind  the  contract  where  the  misstatement  was  not 
made  directly  to  the  vendee,  but  to  a  third  party  who 
communicated  it,  with  the  vendor's  knowledge,  to  the 
vendee/'^'^  On  the  other  hand,  the  duty  is  imposed  upon 
the  vendee  to  act  at  once  upon  learning  the  facts  which 
justify  a  rescission.  Where  he  fails  to  do  so  he  will  be 
bound  by  his  contract,  and  his  remedy  lies  in  an  action 
for  damages,^^  as  he  may  recover  damages  without  re- 
scinding the  contract.^*^ 

AA^ienever  the  false  representations  amount  to  a  war- 
rantj^  an  action  for  damages  will  lie  even  in  the  absence 
of  proof  of  fraud.  Otherwise  the  burden  is  upon  the 
vendee  to  show  that  the  representation  was  fraudulently 
made.^^ 

The  measure  of  damages  in  such  case  is  the  difference 
between  the  actual  value  of  its  property  at  the  time  of 
the  purchase,  and  its  value  if  the  property  had  been 
what  it  was  represented  or  warranted  to  be.*'^ 

Covenants  against  re-engaging  in  business  may  be 
specifically  enforced,  as  we  have  seen,  or  the  vendor  may 
be  enjoined  from  their  violation.  It  has  been  held  in 
England  that  with  an  action  for  specific  performance  a 
claim  for  damages  may  be  made  as  an  alternative."* 

It  has  been  held  that  a  debtor's  goodwill  cannot  be 


54— Dobell  v.  Stevens,  3  B.  &  C.        58— Snow  v.  Holmes,  71  Cal.  142- 

623;  Cruess  v.  Pessler,  39  Cal.  33C.  148. 

55 — Lysney  v.  Selby,  2  Ld.  Raym.         59 — Redgrave  v,  Hurd,  L.  R.  20 

1118.  Ch.  D.  1. 

56 — Pilmore  v.  Hood,  5  Bing.  N.         60 — Morse  v.  Hutchins,  102  Mass. 

C.  97.  439;  Rawson  v.  Pratt,  91  Ind.  9. 

57— Dobell  v.  Stevens,  3  B.  &  C.        61— Hipgrave  v.  Case,  L.  R.  28 

623.  Ch.   D.   356. 


§  89]  GOODWILL.  217 

reached  by  a  creditor's  bill,  because  it  is  not  subject  to 
levy,  in  satisfaction  of  their  debts."" 

The  apijlication  for  injunctive  relief  is  governed  by 
the  rules  concerning  similar  applications  in  trademark 
cases. 

A  plaintiff  need  not  allege  or  })rove  damages  as  a  pre- 
requisite to  an  injunction  to  restrain  a  defendant  from 
re-engaging  in  business,  in  breach  of  a  covenant  between 
the  parties."'^  When  a  vendee  in  applying  for  an  injunc- 
tion also  asked  judgment  for  the  possession  of  the  books 
and  papers  used  by  the  vendor  in  the  business  in  which 
it  had  engaged  in  violation  of  its  covenants  the  order  was 
refused  because  there  was  a  remedy  at  law  for  their  re- 
coveiy.^" 

In  cases  where  the  vendor  of  a  goodwill  is  sought  to 
be  restrained  from  re-engaging  in  business  in  violation 
of  his  covenant,  the  amount  in  controversy  is  the  value 
of  the  goodwill,  and  the  federal  courts  cannot  acquire 
jurisdiction  unless  the  value  of  the  goodwill  exceeds 
$2,000.«=^ 

A  violation  of  a  covenant  not  to  re-engage  in  business 
is  a  defense  to  a  suit  by  the  vendor  upon  notes  given  by 
the  vendee  for  the  purchase  money .^^ 

Wliere  the  covenant  not  to  re-engage  is  incorporated 
in  the  bill  of  sale,  the  consideration  paid  has  been  held 
to  be  not  only  for  the  stock  of  goods,  but  for  the  agree- 
ment not  to  re-engage.^'" 

Remedy  as  to  infringement  of  tradenames  identified 
with  goodiuill.— Many  of  the  actions  for  breach  of  con- 
tract in  relation  to  the  sale  of  goodwill  have  had  for 

62 — Lilienthal    v.    Drucklieb,    84  65 — Lawrence  v.  Times  Printing 

Fed.  Rep.  918.  Co.,  90  Fed.  Rep.  24-28. 

63 — Anderson    v.     Rowland,     18  66 — Townsend  v.  Hurst,. 37  Miss. 

Tex.  Civ.  App.  460;  44  S.  W.  Rep.  679. 

911.  67— Eisel   v.    Hays,   141    Ind.    41, 

64 — Lawrence  v.  Times  Printing  40  N.  E.  Rep.  119. 
Co..  90  Fed.  Rep.  24-26. 


218  HOPKINS   ON    TRADEMARKS.  [§89 

their  object  the  restraint  of  the  vendor  in  the  use  of  the 
tradename  under  which  the  business  has  been  conducted. 
Where  the  goodwill  and  tradename  has  been  sold,  the 
subsequent  use  of  the  name  by  the  vendor  will  be  en- 
joined, even  where  the  vendor  has  reserved  the  right  to 
resume  business  under  any  other  than  the  old  name.^^ 

The  relief  will  be  granted  where  there  has  been  a 
contract  to  convey  the  tradename  and  goodwill,  and  the 
consideration  has  been  paid,  though  the  vendor  has  not 
made  a  fonnal  assignment  of  the  goodwill  and  name.*'^ 

The  relief  will  be  granted  where  the  vendee  does  not 
continue  the  use  of  the  old  name,  but  conducts  the 
business  under  his  own  name.'^^ 

68 — Burckhardt    v.    Burckhardt,  70— Grow  v.  Seligman,  47  Mich. 

42  Ohio  St  474,  51  Am.  Rep.  842.  607,    41    Am.    Rep.    737,   11   N.   W. 

69— United  States  Cordage  Co.  v.  Rep.  404. 
Wm.  Wall's  Sons  Rope  Co.,  35  N. 
Y.  Supp.  978,  90  Hun,  429. 


HI 


CHAPTER  Vn. 

TRADE  SECRETS;    RIGHT  OF  PRIVACY. 

§90.  Introductory.— "A  secret  in  trade  is  fully 
recognized  as  proijertv  in  equity,  the  disclosure  of  which 
will  be  restrained  by  injunction."^  A  contract  in  refer- 
ence to  such  a  secret  cannot  be  in  restraint  of  trade, 
**  because  the  public  has  no  rights  in  the  secret.  "- 

When  the  name  applied  to  a  secret  preparation  is  a 
trademark,  no  one  but  the  owner  of  the  mark  can  apply 
it  to  the  preparation.  But  if  it  be  not  a  valid  trade- 
mark, then  the  manufacture  of  the  secret  preparation, 
and  the  placing  of  it  upon  the  market  under  the  same 
name,  is  open  to  any  one  who  can  lawfully  discover  the 
secret  process.^    But  "it  is  settled  that  a  secret  art  is  a 

1— Smith.  P.  J.,  in  Champlin  v.  389;    54  N.  W.  Rep.  193;   19  L.  R. 

Stoddart,  30  Hun,  300-302.  A.   236;    Davis  v.  Kendall,   2  R.   I. 

2 — Morse  Machine  Co.  v.  Morse,  566;  Siegert  v.  Findlater,  L.  R.  7 
103  Mass.  73-75;  Fowle  v.  Park,  131  Ch.  D.  801;  Comstock  v.  White,  18 
U.  S.  88.  Vickery  v.  Welsh,  13  How.  Pr.  421;  Condy  v.  Mitchell, 
Pick.  523-527.  "Upon  the  sale  of  37  L.  T.  N.  S.  268;  James  v. 
a  secret  process,  a  covenant,  ex-  James,  L.  R.  13  Eq.  421;  Canham 
press  or  implied,  that  the  seller  v.  Jones,  2  V.  &  B.  218;  J.  R.  Wat- 
will  iiot  use  the  process  himself  or  kins  Medical  Co.  v.  Sands,  83 
communicate  it  to  any  other  per-  Minn.  326,  86  N.  W.  Rep.  340. 
son  is  lawful,  because  the  process  "It  may  also  be  observed,  in  this 
must  be  kept  secret  to  be  of  any  connection,  that  the  word  'proper- 
value,  and  the  public  has  no  in-  ty,'  as  applied  to  trade  secrets 
terest  in  the  question  by  whom  it  and  inventions,  has  its  limitations; 
is  used."  for    it    is    undoubtedly     true     that 

Gray,  J.,  in  Central  Transporta-  when  an  article  manufactured  by 

tion   Co.   V.  Pullman's  Palace   Car  some  secret  process,   which  is  not 

Co.,  139  U.  S.  24.     Citing  Fowle  v.  the  subject  of  a  patent,  is  thrown 

Park,  131  U.  S.  88,  97;   Vickery  v.  upon  the  market,  the  whole  world 

Welsh,   19  Pick.  523-527;    Peabody  is  at  liberty  to  discover,  if  it  can 

V.  Norfolk,  98  Mass.  452-460.  by  any  fair  means,  what  the  pro- 

3 — Watkins  v.  Landon,  52  Minn,  cess    is,    and,    when    discovery     is 

219 


220  HOPKINS   ON    TR.\J)EMARKS.  [§91 

legal  subject  of  property,"*  and  its  owner  has  a  vested 
riglit  to  the  secrecy  of  all  those  who  occupy  a  fiduciary 
relationship  to  his  business.  So  that  no  one  who  obtains 
knowledge  of  the  secret  by  fraud  or  unfair  means  will 
be  permitted  to  avail  himself  of  the  fruits  of  his  fraud, 
by  disclosing  the  secret  or  manufacturing  under  it.'^ 

§91.  Where  equity  will  not  interfere.— ''Courts  of 
equity  will  not  interfere  by  injunction  in  disputes  be- 
tween the  owners  of  quack  medicines,  meaning  thereby 
remedies  or  specifics  w^iose  composition  is  kept  secret, 
and  which  are  sold  to  be  used  by  the  purchasers  with- 
out the  advice  of  regular  or  licensed  physicans."^  And 
in  1817  Lord  Eldon  said:  "I  do  not  think  that  the 
court  ought  to  struggle  to  protect  this  sort  of  secrets  in 
medicine."^ 

Broadly  stated,  equity  will  not  interfere  to  prevent 
the  disclosure  of  secrets  by  means  of  which  frauds  have 
been  committed.** 

Then  there  are  limits  to  the  extent  of  the  injunction, 
■which  will  be  suggested  by  the  facts  in  each  particular 
case.  For  example,  in  one  case  which  has  been  fre- 
quently cited,  the  plaintiff  was  a  tanner  and  manufac- 
turer of  leather,  owning  secret  processes  relating  to 
the  treatment  of  leather.     Two  of  his  former  employees 

thus    made,    to    employ   it    in    the  .effect,  see  Stewart  v.  Hook,  118  Ga. 

manufacture  of  similar  articles.  In  145,  45  S.  E.  Rep.  369,  63  L.  R.  A. 

such  a  case,  the  inventor's  or  man-  255;    Dobson   v.   Graham,   49   Fed. 

ufacturer's  property  in  his  process  Rep.  17. 

is   gone;    but    the   authorities    all  5 — Salomon   v.   Hertz,   40    N.   J. 

hold    that,    while    knowledge    ob-  Eq.  400;   Little  v.  Gallus,  38  N.  Y. 

tair.Pd  in  this  manner  is  perfectly  Supp.  487. 

legitimate,  that  which  is  obtained  6 — Shiras,     Circuit     Justice,     in 

by  any  breach  of   confidence  can-  Kohler  Mfg.  Co.  v.  Beeshore,   (2), 

not  be  sanctioned."  Adams,  J.,  in  59  Fed.  Rep.  572-574,  8  C.  C.  A.  215. 

Eastman  Co.  v.  Reichenbach,  20  N.  7 — Williams  v.  Williams,  3  Mer. 

Y.   Supp.  110-116;    affirmed,  29    N.  157;  Seb.  26. 

Y.   Supp.  1143;    79  Hun.  188.  8— Follet  v.  Jeffreyes,  1  Sim.  N. 

4 — Gray,  J.,  in  Peabody  v.  Nor-  S.  1;  Gartside  v.  Outram,  3  Jur.  N. 

folk,  98  Mass.   452.     To  the   same  S.  39. 


§  92]  TRADE  SECRETS.  221 

were  enjoined,  on  his  application,  from  disclosing  any  of 
his  secret  processes,  but,  in  the  absence  of  any  proof  of 
an  express  agreement  of  secrecy,  the  court  refused  that 
portion  of  his  prayer  for  relief  which  asked  that  the  de- 
fendants be  enjoined  from  disclosing  ** where  or  from 
whom  the  complainant  buys  his  materials,  and  to  wliom 
he  sells  his  goods,  or  the  prices  at  which  he  buys  or 
sells;"  the  chancellor  remarking  that  an  agreement  in 
reference  to  such  matters  "may  well  be  regarded,  in 
the  absence  of  anything  to  the  contrary  in  its  terras,  as 
limited  in  its  obligation  to  the  time  of  employment. 
.  .  .  He  (the  employee),  notwithstanding  such  agree- 
ment, might  himself,  after  leaving  the  employment,  use 
the  knowledge  he  had  obtained.  He  might  sell  to  the 
customers  of  his  late  employer,  and  buy  of  those  from 
whom  the  latter  purchased,  and  do  both  in  comi:>etition 
with  him."^ 

§  92.  Protection  in  equity.— Equity  will  always  act  to 
protect  trade-secrets,  and  this  protction  may  be  either 
affirmative  or  negative  in  character.  In  its  affirmative 
form,  relief  is  granted  by  injunction  to  restrain  the  un- 
lawful use  of  such  secrets.  In  its  negative  fonn,  equity 
protects  parties  and  witnesses  against  the  compulsory 
disclosure  of  trade-secrets. 

The  plaintiff's  witness  who  testifies  merely  to  the 
uses  and  effects  of  a  secret  process  is  privileged  from 
answering  questions  on  cross-examination  disclosing 
the  ingredients  of  such  secret  process.^ ^ 

Accordingly  where  the  defense  to  an  action  for  trade- 
mark infringement  is  that  plaintiff's  goods  are  injurious, 
the  defendant  was  not  permitted  to  examine  him  as  to  the 
ingredients  of  which  his  goods  were  composed,  the  court 
saying,  *'if  these  questions  must  be  answered,  every 
manufacturer  will  be  at  the  mercy  of  any  one  who  de- 

9 — Runyon,  C,  in  Salomon  v.  10 — Moxie  Nerve  Food  Co.  t. 
HertE,  40  N.  J.  Eq.  400.  Beach,  35  Fed.  Rep.  465. 


222  HOPKINS   ON    TRADEMARKS.  [§92 

sires  to  extort  from  him  an  account  of  his  process,  for 
an  attempt  to  restrain  an  infringer  would  result  in  the 
disclosing  of  all  that  makes  the  invention  valuable.  "^^ 

In  one  of  the  early  cases  in  which  a  property  right  in 
trade  secrets  was  recognized,  the  proceeding  was  one 
brought  to  enforce  the  sj^ecific  performance  of  a  con- 
tract for  the  sale  of  the  goodwill  of  a  dyer's  business, 
witli  the  exclusive  use  of  a  secret  mode  of  dyeing.  Vice^ 
Chancellor  Leach  sustained  the  contract  and  directed  its 
specific  perfonnance.  In  the  course  of  his  opinion  he 
said:  "Although  the  policy  of  the  law  will  not  permit 
a  general  restraint  of  trade,  yet  a  trader  may  sell  a 
secret  of  business  and  restrain  himself  generally  from 
using  that  secret.  Let  the  master,  in  settling  the  deed 
which  is  to  give  etfect  to  this  agreement,  introduce  a 
general  covenant  to  restrain  the  use  of  the  secret  for 
twenty  years,  and  a  covenant,  limited  in  point  of  lo- 
cality, as  to  carrying  on  the  ordinary  business  of  a 
dyer,  both  parties  being  willing  that  the  agreement 
should  be  so  modified.  "^- 

As  against  employees  who  attempt  to  profit  by  secrets 
of  which  they  have  obtained  knowledge  by  reason  of 
their  employment,  the  right  to  relief  in  equity  has  always 
been  recognized.  In  one  of  the  early  cases  Lord  Cran- 
worth  said:  "There  is  no  doubt  whatever  that  where  a 
party  who  has  a  secret  in  trade  employs  persons  under 
contract,  express  or  implied,  or  under  duty,  express  or 
implied,  those  persons  cannot  gain  the  knowledge  of 
that  secret  and  then  set  it  up  against  their  employer.  "^^ 

ll_Tetlow     V.     Savournin,     15  v.  Darley,  47  L.  J.  Ch.  567;  Thum 

Phila.  170.  Co.  v.  Tloczynski,   114   Mich.  149; 

12 — Bryson  v.  Whitehead,  1  S.  &  72   N.   W.   Rep.   140;     Salomon    v. 

S.  74.  Hertz,  40  N.  J.  Eq.  400;   Eastman 

13 — Morison  v.   Moat,  21    L.    J.  Co.  v.  Reichenbach,  20  N.  Y.  Supp. 

Ch.  248;   Ansell  v.  Gaubert,  Seton  110;  29  N.  Y.  Supp.  1143;  79  Hun. 

(4th   ed.),   235;     Peabody  v.   Nor-  188;    Little    v.    Gallus,    38    N.    Y. 

folk,  98  Mass.  452;  Weston  v.  Hem-  Supp.  487;    Fralich  v.  Despar,  165 

mons,  2  Vict.  L.  R.  Eq.  121;  Hagg  Pa.     St.      24;      Merryweather     v. 


§  92]  TRADE  SECRETS.  223 

In  order  to  obtain  this  relief  it  is  not  necessary  that 
the  employee  should  have  been  bound  to  secrecy  by  con- 
tract. In  an  opinion  dealing  with  a  case  of  tliis  charac- 
ter, Judge  Williams  said:  "Having  entered  the  service 
of  complainants,  and  having  liad  ini})arted  to  him  their 
secrets,  defendant  was,  in  equity  and  good  conscience, 
obliged  to  preserve  them  as  sacredly  as  his  own,  and 
this  as  well  without  a  contract  as  with  it.  "^"^  And  an- 
other court  has  stated  the  rule  as  follows:  "By  a  care- 
ful reading  of  the  various  decisions  upon  this  subject,  it 
will  be  seen  that  some  are  made  to  depend  upon  a  breach 
of  an  express  contract  between  the  parties,  while  others 
proceed  upon  the  theory  that  where  a  confidential  rela- 
tion exists  between  two  or  more  parties  engaged  in  a 
business  venture,  the  law  raises  an  implied  contract  be- 
tween them  that  the  employee  will  not  divulge  any  trade 
secrets  imparted  to  him,  or  discovered  by  him  in  the 
course  of  his  employment,  and  that  a  disclosure  of 
such  secrets,  thus  acquired,  is  a  breach  of  trust  and  a 
violation  of  good  morals,  to  prevent  which  a  court  of 
equity  should  intei'vene."'"^ 

Where  there  is  such  a  contract  between  employer  and 


Moore,   L.    R.    (1892)    2   Ch.    518;  F.  makes  known  to  me  the  ways 

Simmons  Med.  Co.  v.  Simmons,  81  and  secrets  of  manufacturing  and 

Fed.   Rep.   163;    Stewart  v.   Hook,  stilling  of  different  kinds  of  oils, 

118  Ga.  445,  45  S.  E.  Rep.  369,  63  and  of  the  different  kinds  of  grease 

L.   R.   A.   255;    Sanitas   Nut   Food  manufactured  by  him,  that  I  will 

Co.  V.  Cemer, — Mich. — ,   96  N.  W.  not  use  such  knowledge  or  secrets 

Rep.  454;    Stone  v.  Goss,  —  N.  J  for  my  own  gain,  nor  will   I  ever, 

— ,  55  Atl.  Rep.  736.  so  long  as  I   may  live,  divulge  or 

The  following  contract  was  held  make  known  in  any  way  the  knowl- 

valid  and  binding  upon  the  defend-  edge    I   may  receive  while  in  his 

ant  in  Fraiich  v.  Despar.  supra:  employ,  or  any  part  of  said  secret, 

"I,  Andrew  Despar,  of  the  city  either  of  mix  in  oils  or  otherwise.'* 

of  Pittsburg,  state  of  Pennsylvania,  14 — Simmons   Med.    Co.    v.    Sim- 

in  the  employ  of  E.  C.  Fraiich,  a  mons,  81  Fed.  Rep.  163-166. 

manufacturer  of  oils,  etc.,  also  of  15 — Adams,  J.,  in  Eastman  Co.  v. 

the  said  city  of  Pittsburg,  do  sol-  Reichenbach,  20  N.  Y.  Super.  110- 

emnly  swear  that  if  the  said  E.  C.  116. 


224  HOPKINS   ON    TRiVDEMARKS.  [§  92 

employee,  it  is  not  objectionable  as  being  in  restraint  of 
trade.^^ 

The  obligation  of  secrecy  extends  to  every  character 
of  employment.  Thus,  canvassers  who  have  accumu- 
lated materials  in  the  course  of  soliciting  advertisements 
for  their  employer  may  be  enjoined  from  using  such 
material  for  a  rival  publication;^''^  and  an  engine 
maker's  clerk  who  had  made  a  table  of  dimensions  of 
Ills  employer's  engines  was  enjoined  from  disclosing  the 
data  so  obtained.^ ^ 

Where  it  affirmatively  appears  that  the  trade  secret 
exists,  that  it  has  been  imparted  in  confidence  to  the 
defendant,  and  that  the  plaintiff  will  be  injured  by  the 
disclosure,  if  one  is  made,  the  defense  that  defendants  do 
not  intend  to  use  or  divulge  the  secret  will  not  be  given 
much  weight,  for  the  reason  that  under  tlie  circumstances 
an  injunction  cannot  hann  the  defendant,  and  if  the 
injunction  was  withheld,  and  the  secret  disclosed,  the 
injury  to  the  plaintiff  would  be  one  which  the  law  is 
practically  powerless  to  remedy.^'' 

Where  a  designer,  employed  for  his  special  skill  by  a 
manufacturer,  makes  the  entries  of  formulas  invented 
by  him  in  the  course  of  his  employment  in  books  of  his 
own  instead  of  books  furnished  by  his  employer  for  the 
purpose,  the  employer  is  entitled  to  the  knowledge  of 
the  formulas.2^ 

The  principles  under  consideration  extend  beyond  the 
relationshiiD  of  master  and  servant.  In  fact,  through- 
out all  of  this  book  that  relates  to  equitable  remedies  we 
are  but  dealing  with  the  application  of  those  remedies 
which  has  been  made  upon  specific  forms  of  fraud.     The 

16 — Simmons   Med.    Co.   v.   Sim-  19 — Russell   v.   Lundeen,   72  Off. 

mons,  81  Fed.  163;  Peabody  v.  Nor-  Gaz.  420. 

folk,  98  Mass.  452.  20— Dempsey  v.  Dobson,  174  Pa. 

17— Lamb  v.  Evans,  L.  R.  (1892)  122,  34  Atl.  Rep.  459,  32  L.  R.  A. 

3  Ch.  462.  761. 

18 — Merryweather  v.  Moore,    L. 
R.  (1892)   2  Ch.  522. 


§  92j  TRADE  SECRETS.  225 

cases  analogous  to  trade  secrets  are  many,  and  the  lan- 
guage of  Vice-Chaucellor  Turner  in  the  leading  case  of 
Morrison  v.  Moat  is  apj)licable  to  all  of  them:  ''Differ- 
ent grounds  have  been  assigned  for  the  exercise  of 
the  jurisdiction.  In  some  cases  it  has  been  referred  to 
property,  in  others  to  contract,  and  in  others,  again,  it 
has  been  treated  as  founded  upon  trust  or  confidence, 
meaning,  as  I  conceive,  that  the  court  fastens  the  obli- 
gation on  the  conscience  of  the  party,  and  enforces  it 
against  him  in  the  same  manner  as  it  enforces,  against  a 
party  to  whom  a  benefit  is  given,  the  obligation  of  per- 
forming a  promise,  on  the  faith  of  which  the  benefit  has 
been  conferred.  "^^ 

So  a  photographer  has  been  restrained  from  making 
prints  from  a  negative  bearing  the  plaintiff's  portrait ;22 
a  lithographer,  from  making  copies  of  the  plaintiffs' 
pictures  in  excess  of  the  number  ordered  by  the  plaint- 
iffs ;23  and  the  exhibition  of  etchings,  obtained  by  the 
defendant  through  a  breach  of  trust,  has  been  re- 
strained,-* as  has  the  publication  of  lectures,  not  pub- 
lished or  authorized  to  be  published  by  the  lecturer,^^ 
and  the  publication  of  private  letters.^^ 

The  ground  for  enjoining  the  publication  of  private 
letters  has  sometimes  been  based  upon  a  property  right 
in  them,27  and  sometimes  upon  the  ground  that  their 
publication  would  be  painful  to  the  writer.^^ 

21— Morison  v.  Moat,  20  L..  J.  Ch.  Q.  B.  D.  629,  Levyeau  v.  Clements, 

248.  175  Mass.  376;   50  L.  R.  A.  397. 

22— Pollard  v.  Photographic  Co..         24— Albert  v.  Strange.  2  DeG    & 

40   C.   D.    (Eng.)    345.      Moore    v.  gm.  652. 
Rugg.  44  Minn.  28,  9  L.  R.  A.  58.         „'       ."  ,,  tt   .  ^. 

AR  XT    w    D^,,    1^1      rru  *•  25— Abernethy  v.  Hutchinson,  3 

46  N.  W.  Rep.  141.     The  negative  t      t    /-.u     oi . 

,,..,,  Ij.  o.   Cn.    Lii. 
may  belong  to    the    photographer, 

but  he  has  no  right  of  reproduc-  26— Earl  of  Lytton  v.  Devey.  54 

tion  without  the  purchaser's    con-  ^-  -^^  ^^'  ^93;    Perceval  v.  Phipps. 

sent.    Corliss  v.  E.  W.  Walker  Co,  ^  ^®^-  *  ^-  ^^• 

64  Fed.  Rep.  280;    Press  Pub.  Co.  27— Pope    v.    Curl,    2   Atk.    342; 

V.  Falk.  59  Fed.  Rep.   324.  Woolsey  v.  Judd,  4  Duer  379. 

23— Tuck  &  Sons  v.  Priester,  19  28— Gee  v.  Pritchard,  2  Swanst. 
16 


226  HOPKINS  ON   TRADEMARKS.  [§92 

A  peculiar  state  of  facts  developed  in  a  recent  case  is 
worthy  of  notice.    The  plaintiff,  a  hardware  dealer,  had 
published   and   distributed   to   the   trade   catalogues   in 
which  the  prices   were   marked  in  figures,   letters   and 
characters,  according  to  a  secret  code  devised  by  plain- 
tiff.   The  defendant,  who  owned  a  copy  of  the  catalogue, 
so    marked    with     prices     in     secret     characters,      ol>- 
tained  a  copy  of  the  key  to  the  code  from  one  of  the 
plaintiff's  employees,  and  incorporated  the  secret  code 
from  the  key  into  the  catalogue.    Upon  this  state  of  facts 
the  defendant  was  enjoined  from  disclosing  the  informa- 
tion thus  obtained,  and  a  receiver  was  appointed  to  take 
charge  of  the  defendant's  copy  of  the  catalogue.^''     This 
case  api^ears  to  be  in  conflict  with  the  English  case  of 
Renter's  Telegram  Co.  v.  Byron,  where  the  plaintiffs 
devised  a  cypher  code  containing  cypher  words  indicat- 
ing the  names   of  their   customers.     This   cypher  was 
communicated  to  the  defendant  while  he  was  in  the  em- 
plojTuent  of  the  plaintiffs.     After  he  left  the  plaintiffs 
and  started  a  rival  business,  he  sent  advertisements  to 
their  customers  stating  that  he  had  their  cyphers,  and 
soliciting  their   custom.     The   court   held  that  the   de- 
fendant was  guilty  of  no  breach  of  trust  because  the 
cyphers  were  known  to  the  customers,  and  the  defend- 
ant could  have  obtained  the  cyphers  from  any  of  them 
who  might  choose  to  do  business  with  him.^^     The  de- 
cision of  the  American  court  seems  to  be  correct  in  prin- 
ciple. 

In  every  case  where  the  plaintiff  seeks  protection  for 
a  trade  secret,  it  must  appear  that  it  really  is  a  secret. 
If  a  so-called  secret  process  is  lawfully  known  to  others 
in  the  trade,  no  one  will  be  enjoined  from  disclosing  or 


402;   Wetmore  v.   Scovell,  3  Edw.     Waibel,  1  So.   Dak.  488.  47  N.  W. 
Ch.  51^.  Rep.  814,  11  L.  R.  A.  267. 

29 — Simmons     Hardware   Co.   v.        30 — Reuter's     Telegram    Co.     v. 

Byron,  43  L.  J.  Ch.  661. 


§  92 j  TRADE  SECRETS.  227 

using  it.^^  But  the  fact  tliat  the  secret  has  been  the  sub- 
ject of  a  patent,  since  expired,  which  remained  a  mere 
paper  patent,  and  dormant,  does  not  negative  the  fact 
that  it  is  or  may  be  still  a  secret.  ''Many  an  invention 
and  many  an  idea  of  value  are  doubtless  to  be  found  in 
the  records  of  the  patent  office,  but  so  far  as  public 
actual  knowledge  thereof  is  concerned,  they  might  as 
well  be  non-existent.  "^- 

Contracts  relating  to  trade  secrets  are,  of  course,  sub- 
ject to  the  same  rules  of  construction  as  other  contracts. 
So  in  a  case  where  the  defendant  sold  a  formula  for  mak- 
ing certain  soap  and  "agreed  to  file  and  surrender  his 
right  and  claims  in  the  process  and  formulae  and  making 
of  said  soap,"  and  that  he  "would  not  sell  any  plants 
in  the  United  States  for  the  manufacture  of  that  par- 
ticular kind  of  soap,  during  the  tenn  of  twenty  years," 
it  was  very  properly  decided  that  the  contract  did  not 
preclude  him  from  selling  or  putting  up  any  other  kind 
of  a  soap  plant  to  or  for  anybody  else;  and  where  he 
put  up  a  soap  plant  for  making  soaps  in  general,  and 
the  owner  of  the  plant  then  began  the  manufacture  of 
the  particular  soap  in  question,  there  was  no  cause  of 
action  either  as  against  him  or  the  owners  of  the  plant.^^ 

Employees  may  be  enjoined  from  disclosing  trade 
secrets  even  in  the  absence  of  an  express  agreement  of 
secrecy,  as  we  have  seen,  and  it  is  no  defense  that  the 
employee  was  a  minor  at  the  time  he  entered  the  em- 
ployment.^* 

A  defendant  had  agreed  upon  entering  the  employ- 
ment of  the  plaintiff  as  a  workman,  on  a  salaiy,  to  dis- 
close certain  secret  processes  known  only  to  him.     He 

31— Bell    &    Bogart  Soap  Co.  v.  33— Bell  &  Bogart    Soap    Co.    v. 

Petrolia  Mfg.  Co.,   54   N.   Y.   Supp.  Petrolia  Mfg.   Co.,  54   N.  Y.  Supp. 

663-666;     Bristol  v.  Equitable  Life  663. 

Assurance  Society,  132  N.  Y.  264;  34— Little   v.   Gallus,   38    N.    Y. 

30  N.  E.  Rep.  506.  Supp.  487. 

32 — Shiras,    J.,     in     Benton    v. 
Ward,  59  Fed.  Rep,  411-413. 


228  HOPKINS   ON    TR.U)EMARKS.  [§  92 

failed  to  make  tlie  disclosure  and  left  the  plaintiff's  em- 
ployment. In  defense  to  an  application  for  an  injmac- 
tion  restraining  liim  from  imparting  the  secret  processes 
to  others,  he  urged  that  his  employment  had  been  for  no 
definite  tenn.  This  defense  did  not  avail  in  view  of  the 
fact  that  the  plaintiff  had  invested  in  material  it  expected 
to  use  in  connection  with  the  secret  processes.  The  court 
observed  that '*  although  the  processes  were  not  patented, 
yet,  as  they  were  secret,  and  as  their  secrecy  was  pro- 
tected by  the  contract  between  the  defendant  and  the 
plaintiff,  the  plaintiff  is  in  a  situation  to  insist  that  the 
defendant,  who  agreed  to  protect  the  secrecy  of  these 
processes,  and  thus  preserve  their  value,  should  not  be 
permitted  to  disclose  them,  and  thus  deprive  the  plain- 
tiff of  the  valuable  property  which  he  had  induced  it  to 
purchase. '  '^^ 

Where  an  employe  of  a  partnership  invents  a  secret 
process  for  the  use  of  the  firm,  either  member  of  the 
firm  may  after  dissolution  use  the  secret  process,  and 
either  member  will,  on  the  complaint  of  another  member, 
be  enjoined  from  representing  himself  as  being  the  sole 
owner  of  such  secret  process.'® 

Trade  secrets  or  processes,  if  reduced  to  writing,  are 
subject  to  levy  and  sale  under  a  common-law  writ  of 
execution.''^  ^AHiere  one  not  a  party  to  the  suit  had 
machinery  of  his  own,  used  in  connection  with  a  secret 
process  belonging  to  him,  on  premises  belonging  to  a 
corporation  for  which  a  receiver  was  appointed,  on  the 
facts  being  presented  to  the  court  the  order  appointing 
the  receiver  was  so  modified  as  to  permit  the  third  party 
to  remove  his  machinery  from  the  premises,  and  without 
the  receiver  being  given  the  opportunity  to  inspect  the 
machinerj^,  as  such  inspection  would  lead  to  the  dis- 
ss—Rumsey,  J.,  in  National  Gum  25  N.  Y.  Supp.  857;  affirmed,  83 
&  Mica  Co.  V.  Braendly,  51  N.  Y.  Hun,  43;  31  N.  Y.  Supp.  857. 
Supp.  93-97.  37 — Hanley  v.  Fidelity  Ins.  T.  A 

36 — Baldwin  v.  Von    Micheroux,     S.  Co.,  8  Pa.  Dist.  R.  207. 


§  92]  TRADE  SECRETS.  229 

coveiy  of  the  process.^"  Trade  secrets,  such  as  recipes 
or  processes  are  proper  subjects  oi"  taxation.^'-'  A  false 
reijresentation  as  to  the  efficiency  of  a  secret  process 
is  ground  for  rescinding  a  contract  for  its  sale*" 

It  would  seem  clear,  on  principle,  that  a  witness  not  a 
party  to  a  suit  would  be  fully  protected  against  any 
attempt  to  compel  him  to  disclose  his  trade  secrets,  yet 
we  find  a  case  holding  that  a  subpoena  duces  tecum  call- 
ing for  the  production  of  drawings  by  such  a  witness 
was  enforced,  notwithstanding  his  objection  that  the 
drawings  related  to  a  secret  process  used  by  him.^' 
Tliis  decision  is  unsupported  by  any  authority.  On  the 
other  hand,  a  defendant  in  an  action  for  infringement  of 
a  process  patent  will  not  be  compelled  to  submit  to  an 
inspection  of  his  factory  where  his  answer  avers  that 
his  process  is  not  that  of  the  patent,  and  is  his  own 
secret,  unpatented  process,  used  from  a  period  antedat- 
ing the  patent  in  suit.^^  §4908,  United  States  Revised 
Statutes,  a  provision  relating  to  the  taking  of  testimony 
in  interference  cases  pending  in  the  Patent  Office,  pro- 
vides that  no  witness  shall  be  guilty  of  contempt  for 
disobeying  a  subpoena  issued  by  the  clerk  of  any  court 
of  the  United  States,  as  provided  for  by  §4906,  ''for 
refusing  to  disclose  any  secret  invention  or  discovery 
made  or  owned  by  himself."  In  an  interference  pro- 
ceeding, one  of  the  parties  to  the  interference  refused 
to  answer  an  interrogatory  propounded  to  him,  placing 
his  refusal  upon  the  ground  that  the  question  sought 
to  disclose  a  secret  discover}^  or  invention,  such  as  is 
protected  by  §4908.  It  was  held  that  the  witness  was 
not  entitled  to  the  protection  of  the  section  for  the  rea- 

38 — Witt  V.  Reed    Electric    Co.,  41 — Johnson    Steel    Street    Rail 

187  Pa.  424;    41  Atl.  Rep.  317.  Co.  v.  North  Branch  Steel  Co.,  48 

39— Re  Brandreth,  59  N.  Y.  Supp.  Fed.  Rep.  191. 

1092;    28  Misc.  Rep.  468.  42— Stokes  Bros.  Mfg.  Co.  v.  Hel- 

40 — Finley  Rubber-Varnish  &  En-  ler,  56  Fed.  Rep.  297. 
amel  Co.  v.  Flnley,    N.    J.    Ch.  32 
Atl.  Rep.  740. 


230  HOPKINS   ON    TRADEMARKS.  [§92 

son  that  the  alleged  secret  possessed  so  intimate  a  con- 
nection with  the  subject-matter  of  the  patent,  that  he 
had  no  right  to  withhold  it  from  the  public.  The  court 
said,  ''In  applying  for  the  patent  it  was  his  duty  to  dis- 
close the  most  available  method  known  to  him  of  carry- 
ing the  discovery  into  effect— in  other  words,  of  manu- 
facturing his  new  fabric.  This  information,  which  may 
be  used  by  others  after  his  patent  has  expired,  is  an 
important  part  of  the  compensation  which  the  public  ob- 
tains for  the  temporary  monopoly  granted  him.  If  he 
could  withhold  it,  disclosing  an  inferior  method  simply, 
which  he  does  not  employ,  the  discovery  would  never  be- 
come available  public  property,  as  the  patent  laws  con- 
template it  shall.  He  would  have  a  monopoly  after  his 
patent  had  expired,  which  would  continue  as  long  as  he 
could  conceal  this  material  part  of  his  discovery.  I  do 
not  say  that  such  disclosure  was  essential  to  the  validity 
of  his  patent,  (that  question  is  not  before  me,)  but  the 
information  withheld  does  not  constitute  such  a  secret 
as  the  section,  or  equity,  protects.  "^^ 

It  is  no  defense  to  an  action  for  royalties  on  the 
manufacture  of  articles  invented  by  the  plaintiff  and 
made  under  his  direction  and  from  dies  furnished  by 
him,  that  the  article  was  not  patented;  ''so  long  as  the 
inventor  holds  the  secret  in  his  own  possession,  it  is 
property,  or  a  thing  of  value,  for  the  transfer  of  which 
he  may  demand  a  price;  and,  if  he  passes  it  over  to  a 
purchaser  on  an  agreement  to  pay,  it  is  no  defense  to 
the  latter  to  say  that  there  is  no  patent.""  One  who 
has  become  bound  as  an  employee  not  to  divulge  a  trade 
secret,  cannot  defend  on  the  ground  that  the  secret  was 
dishonestly  procured  by  complainant's  assignee.^^     The 

43_Dornan  v.  Keefer,    49    Fed.  45— Vulcan     Detinning     Co.     v. 

Rep.  462,  58  Off.  Gaz.  1093.  American   Can   Co.,   N.    J.   Ch.,  58 

44— Mitchell,   J.,  in  Kroegher  v.  Atl.  Rep.  290. 
McConway  &   Forley   Co.,   149    Pa. 
St.  444-457;    23  Atl.  Rep.  341. 


§  93]  TRADE  SECRETS.  231 

general  rule,  however,  is  well  settled,  that  **if  the  giv- 
ing of  the  testimony  sought,  or  the  production  of  the 
documents  called  for  will  disclose  what  are  character- 
ized as  'trade-secrets,'  the  witness  has  a  legal  privilege 
to  witlihold  it."^''  In  a  bill  to  enjoin  the  disclosure  of 
a  secret  process,  it  is  not  necessary  to  state  what  the 
process  is.^^ 

§  93.  The  right  of  privacy.— Judge  Cooley  said  ''the 
right  of  one's  person  may  be  said  to  be  a  right  of  com- 
plete immunity;  to  be  let  alone."*"  This  "right  to  be 
let  alone,"  if  extended  to  the  unauthorized  publication 
of  the  portrait  of  an  individual,  would  constitute  the 
right  of  privacy  concerning  which  there  has  been  con- 
siderable discussion  of  late  years.  To  say  whether  that 
right  will  ever  be  generally  recognized,  would  be  merely 
a  guess  in  the  present  state  of  the  adjudications,  and 
the  guess  would  be  much  more  hazardous,  if  one  were  to 
say  whether  or  not  the  right  of  privacy  could  ever  be 
extended  to  the  protection  of  anything  more  than  the 
reproduction  of  the  portrait  of  an  individual.  As  yet, 
there  are  but  few  decisions  upon  the  subject,  although  it 
has  been  considerably  discussed  in  legal  and  other 
periodicals.^*^ 

The  difficulty  attendant  upon  the  assertion  of  this 
right  appears  to  reside  principally  in  the  apparent  im- 
possibility of  extending  the  protection  of  equity  to  this 
' '  right  to  be  let  alone, ' '  to  anything  beyond  the  mere  un- 
authorized reproduction  of  the  likeness  of  an  individual, 
without  creating  a  species  of  lese  majeste,  and  establish- 

46 — Cochran,      J.      in      Crocker-  Harv.   Law  Rev.   193.     Other   arti- 

Wheeler  Co.  v.  Bullock,    134    Fed.  cles,  32  Cent.  L.  J.  69;    40  Cent.  L. 

Rep.  241,  245.  J.  53;    49  Cent.  L.  J.  379;  55  Cent. 

47— S.     Jarvis    Adams      Co.     v.  L.  J.  123;     57  Cent  L.  J.  361;    30 

Knapp,  58  C.  C.  A.  1,  121  Fed.  Rep.  Am.  Law  Rev.  614;    12  Yale  L.  J. 

34.  40.  35;     24   Nat.    Corp.   Rep.    709;     25 

48— Cooley  on  Torts,  139.  Nat.  Corp.  Rep.  183,  415. 

49— "The    Right    of    Privacy,"    4 


232  HOPKINS  ON   TRADEMARKS.  [§93 

ing  a  judicial  censorship  of  all  critical  matter  relating  to 
an  individual,  wliicli  happens  to  displease  him. 

Thus,  Judge  Parker  has  stated,  in  his  recent  opinion 
denying  the  existence  of  the  right  of  privacy,  that  'Hhe 
so-called  'right  of  privacy'  is,  as  the  phrase  suggests, 
founded  upon  the  claim  that  a  man  has  a  right  to  pass 
through  this  world,  if  he  wills,  without  having  his  pic- 
ture published,  his  business  enterprises  discussed,  his 
successful  experiments  written  up  for  the  benefit  of 
others,  or  his  eccentricities  commented  upon,  either  in 
hand-bills,  circulars,  catalogues,  periodicals,  or  news- 
papers; and  necessarily,  that  the  things  which  may  not 
be  written  and  published  of  him  must  not  be  spoken  of 
him  by  his  neighbors,  whether  the  comment  be  favorable 
or  otherwise.  "^°  This  dictum  calls  attention  to  the 
rediictio  ad  ahsiirdum  which  would  result  if  the  ''right 
to  be  let  alone"  were  to  be  literally  asserted.  And  at 
the  threshold  of  the  inquiry,  it  is  obvious  that  this 
"right  to  be  let  alone"  must  be  so  limited  as  not  to 
interfere  with  freedom  of  speech.  The  right  of  the  in- 
dividual to  be  protected  against  publication  of  false  and 
defamatory  matter  is  fully  established,  and  adequately 
protected  by  the  law.  In  going  beyond  the  law  of  slan- 
der and  libel,  in  recognition  of  the  individual's  right 
not  to  be  even  criticised,  or  commented  upon,  a  task  is 
being  undertaken  which  is  both  delicate  and  difficult,  if 
it  is  not,  indeed,  impossible.  That  any  such  right  ex- 
isted in  the  common  law  has  been  asserted,  but  scarcely 
proven.  Again  quoting  from  Judge  Parker,  "mention 
of  such  a  right  is  not  to  be  found  in  Blackstone,  Kent, 
or  any  other  of  the  great  commentators  upon  the  law, 
nor  .  .  .  does  its  existence  seem  to  have  been  as- 
serted prior  to  abont  the  year  1890."^^ 

Of  course,  the  absence  of  precedent  does  not  negative 

50 — Roberson  v.  Rochester  Fold-        51 — Roberson  v.  Rochester  Fold- 
ing Box  Ck).,  171  N.  Y.  540.  in^  Box  Co.,  171  N.  Y.  540. 


§  93]  TRADE  SECRETS.  233 

the  absence  of  a  right  and  its  corresponding  remedy,  but 
the  right,  about  which  so  much  has  Ix^en  written  witli  the 
result  that  the  only  definition  of  it  whicli  has  been  fonnu- 
lated  is  contained  in  the  words  "the  right  to  be  let 
alone,"  a  definition  which,  on  its  face,  cannot  be  liter- 
ally construed,  and  whose  necessary  limitation  seems  to 
be  incapable  of  definition,  must  be  closely  scrutinized, 
and  carefully  weighed  before  it  can  secure  a  place  in 
our  jurisprudence. 

In  1892  this  right  was  distinctly  affirmed  by  the 
supreme  court  of  New  York  in  a  case^-  in  which  an  in- 
junction issued  against  the  execution  and  display  at  the 
Chicago  World's  Fair  of  a  statue  of  Mrs.  Schuyler, 
which  statue  was  to  be  designated  "The  Typical  Philan- 
thropist." The  proceeding  was  brought  by  a  relative  of 
Mrs.  Schuyler,  and  the  injunction  issued  against  the 
members  of  an  unincorporated  association  under  whose 
auspices  the  display  was  to  be  made.  The  motion  for 
injunction  pendente  lite  was  granted  upon  the  ground 
that  Mrs.  Schuyler  was  not  a  public  character  because 
she  had  not  placed  herself  before  the  public,  either  in 
accepting  public  office  or  in  becoming  a  candidate  for 
office,  or  as  an  artiste  or  literateure.  This  order  being 
appealed  from,  Van  Brunt,  P.  J.,  said:  "While  con- 
curring with  the  conclusion  arrived  at  by  the  learned 
justice  below,  I  cannot  subscribe  to  the  doctrine  which 
seems  to  pervade  the  opinion  rendered  upon  the  deci- 
sion of  the  motion,  that  if  ]\[rs.  Schuyler  had  been  a 
public  character,  as  defined  by  him,  this  motion  should 
have  been  denied.  The  claim  that  a  person  who  volun- 
tarily places  himself  before  the  public,  either  by  accept- 
ing public  office  or  becoming  a  candidate  for  office,  or 
as  an  artist  or  literary  man,  thereby  surrenders  his  per- 
sonality while  living  and  his  memory  when  dead  to  the 
public,  to  be  used  or  abused,  as  any  one  of  that  irre- 

52— Schuyler  v.  Curtis,  19  N.  Y.  Supp.  264. 


234  HOPKINS   ON    TRADEMARKS.  [§  93 

sponsible   body  may   see  fit,   cannot  for  a  moment  be 
entertained.     .     .     .     It  is  urged  upon  the  part  of  the 
api^ellants  that  even  if  Mrs.  Schuyler  were  alive,  and 
had   the   same   objection  to   the    defendants'    proposed 
action  that  the  plaintiff  now  has,  she  would  be  remedi- 
less  and  powerless.     If  such  were  the   fact,   it  would 
certainly  be  a  blot  upon  our  boasted  system  of  juris- 
prudence that  the  courts  were  powerless  to  prevent  the 
unwarranted  doing  of  things  by  persons  who  are  mere 
volunteers,  which  would  wound  in  the  most  cruel  man- 
ner the  feelings  of  many  a  sensitive  nature.    It  is  fur- 
ther urged  that  the  plaintiff  has  no  standing  in  court 
and  that  the  fancied  injury  to  the  plaintiff  complained 
of,  if  any  such  injurj^  can  be  in  any  way  discovered,  is 
certainly  not  such  an  injury  as  the  court  will  grant  an 
injunction  to  prevent,  because  it  is  not  an  injuiy  to  his 
person,  to  his  estate,  or  to  his  good  name,  and  is  not  a 
violation  of  his  privacy  or  seclusion,  and  because  the 
plaintiff  stands  in  the  same  relation  to  the  defendants 
and  to  their  i)roject  as  does  all  the  rest  of  the  world, 
and  in  no  other  relation.    The  result  of  this  claim  is  that 
when  a  x>erson  is  dead  there  is  no  power  in  any  court  to 
protect  his  memory,  no  matter  how  outrageously  it  may 
be  insulted.     The  feelings  of  relatives  and  friends  may 
be  outraged,  and  the  memory  of  the  deceased  degraded 
with  impunity,  by  any  person  who  may  desire  thus  to 
affect  the  living.    It  seems  to  us  that  such  a  proposition 
carries  its  own  refutation  with  its  statement.     It  can- 
not be  that  by  death  all  protection  to  the  reputation  of 
the  dead  and  the  feelings  of  the  living,  in  connection 
with  the  dead,  has  absolutely  been  lost.     The  memory 
of  the  deceased  belongs  to  the  sur\dving  relatives  and 
friends,  and  such  relatives  have  a  right  to  see  that  that 
which  would  not  have  been  permitted  in  respect  to  the 
deceased  when  living  shall  not  be  done  with  impunity 
when  the  subject  has  become  incapable    of    protecting 
himself.    It  is  undoubtedly  true  that  cases  of  the  char- 


§  93]  TRADE  SECRETS.  235 

acter  now  before  the  court  are  not  to  be  found  in  the 
books.  But  it  is  probably  the  first  time  in  the  history 
of  the  world  that  the  audacious  claim  which  is  here 
presented  has  ever  been  advanced.  If  it  had,  we  have 
no  doubt  the  books  would  have  contained  a  record  in 
connection  with  the  same.  The  fact  that  the  plaintiff 
has  suffered  no  pecuniary  damage,  redress  for  which  is 
sought  in  this  action,  is  no  answer  to  the  application, 
because  one  of  the  most  important  departments  in  the 
jurisprudence  of  courts  of  equity  is  the  prevention  of 
wrongs  which  would  be  otherwise  irreparable  because 
courts  of  law  cannot  afford  any  remedy  in  damages.'" 

Upon  entering  judgment  in  the  same  case,  Ingraham, 
J.,  calls  attention  to  the  fact  that  the  action  of  the  de- 
fendants was  not  a  libel  nor  within  the  provisions  of  the 
New  York  constitution  securing  to  each  citizen  the  right 
to  freely  speak,  write  and  publish  his  sentiments  on  all 
subjects.- 

In  a  subsequent  case  (1893)  the  superior  court  of 
New  York  city  reaffirmed  the  doctrines  of  Schuyler  v. 
Curtis  in  the  case  of  an  actor  whose  portrait  was  to  be 
published  in  connection  with  that  of  another  member  of 
his  profession  as  the  subjects  of  a  voting  contest  to 
ascertain  which  was  the  more  popular,  and  such  publi- 
cation was  enjoined;  the  court  remarking  that  ''the 
courts  will  in  such  cases  secure  to  the  individual  what 
has  been  aptly  termed  the  right  to  be  let  alone.  "^ 

In  1895  Schuyler  v.  Curtis  reached  the  New  York 
court  of  appeals,  and  in  an  elaborate  opinion  delivered 
by  Judge  Peckham  the  judgment  of  the  lower  court  was 
reversed.  In  the  course  of  his  opinion,  however,  he 
says:  "For  the  purpose  we  have  in  view  it  is  unneces- 
sary to  wholly  deny  the  existence  of  the  right  of  privacy 

1— Schuyler  v.  Curtis,  64  Hun.  3— Marks  v.  Jaffa,  26  N.  Y. 
594.  Supp.  908,  6  Misc.  Rep.  290. 

2— Schuyler  v.  Curtis.  24  N.   Y. 
Supp.  509-511. 


236  HOPKINS   ON    TR.VDEMARKS.  [§93 

to  which  the  plaintiff  appeals  as  the  foundation  of  his 
cause  of  action.  It  may  be  admitted  that  courts  have 
power  in  some  cases  to  enjoin  the  doing  of  an  act  where 
the  nature  or  character  of  the  act  itself  is  well  calculated 
to  wound  the  sensibilities  of  an  individual,  and  where 
the  doing  of  the  act  is  wholly  unjustifiable,  and  is,  in 
legal  contemplation,  a  wrong,  even  though  the  existence 
of  no  'property,'  as  that  term  is  generally  used,  is  in- 
volved in  the  subject. 

"If  the  defendant  had  projected  such  a  work  in  the 
lifetime  of  Mrs.  Schuyler,  it  would  perhaps  have  been 
a  violation  of  her  individual  right  of  privacy,  because 
it  might  be  contended  that  she  had  never  occupied  such 
a  position  towards  the  public  as  would  have  authorized 
such  action  by  any  one  as  long  as  it  was  in  opposition 
to  her  wishes."  Judge  Gray  in  a  dissenting  opinion, 
stated,  ''I  cannot  see  why  the  right  of  privacy  is  not  a 
form  of  property,  as  much  as  the  right  of  complete  im- 
munity of  one's  person."*  Concerning  this  case,  the 
supreme  court  of  Georgia  has  stated  that  it  ''settles 
nothing  as  to  the  existence  of  a  right  of  privacy,  but 
merely  rules  that  if  it  exists  at  all,  it  is  a  personal  right, 
and  dies  with  the  person."^ 

Judge  Parker  has  said  of  this  decision  that  "It  is  not 
authority  for  the  existence  of  a  right  to  privacy  which 
entitles  a  party  to  restrain  another  from  doing  an  act 
which,  though  not  actionable  at  law,  occasions  the  plain- 
tiff mental  distress.'"^ 

Pending  this  appeal  another  New  York  court  had  held 
that  "a  parent  cannot  maintain  an  action  to  enjoin  the 
unauthorized  publication  of  the   portrait  of  an  infant 

4 — Schuyler  v.  Curtis,  42  N.  E.        5 — Pavesich  v.  New  England  Life 
Rep.  22-24;   147  N.  Y.  434;   49  Am.     Ins.  Co.,  50  S.  E.  Rep.  68. 
St.  Rep.  671;    31  L.  R.  A.  286.  6— Roberson  v.    Rochester  Fold- 

ing Box  Co.,  171  N.  Y.  540. 


55  93]  TRADE  SECRETS.  237 

child,  and  for  damages  for  iujuiy  to  his  sensibilities 
caused  by  the  invasion  of  his  child's  privacy,  for  the  law 
takes  no  cognizance  of  a  sentimental  injury,  independent 
of  a  wrong  to  i>erson  or  property."^ 

In  1902  the  New  York  court  of  appeals  finally  held 
that  there  was  no  right  of  privacy  at  law  or  enforceable 
in  equity.** 

The  supreme  court  of  Michigan  in  1899  held  that 
it  had  no  jurisdiction  to  enjoin  the  use  of  the  name 
and  likeness  of  a  deceased  person  used  upon  a  label  ap- 
plied to  a  cigar  named  after  him,  so  long  as  such  publi- 
cation did  not  amount  to  a  libel.  At  the  conclusion  of 
an  exhaustive  review  of  the  cases,  Hooker,  J.,  said: 
''This  'law  of  privacy'  seems  to  have  obtained  a  foot^ 
hold  at  one  time  in  the  history  of  our  jurisprudence,  not 
by  that  name,  it  is  true,  but  in  effect.  It  is  evidenced 
by  the  old  maxim,  the  greater  the  truth  the  greater  the 
libel ;  and  the  result  has  been  the  emphatic  expression  of 
public  disapproval,  by  the  emancipation  of  the  press  and 
the  establishment  of  freedom  of  speech,  and  the  aboli- 
tion in  most  of  our  states  of  the  maxim  quoted,  by  con- 
stitutional provisions. ' ' 

"The  limitation  upon  the  exercise  of  these  rights  be- 
ing the  law  of  slander  and  libel,  whereby  the  publication 
of  an  untruth  that  can  be  presumed  or  shown  to  the  sat- 
isfaction, not  of  the  plaintiff,  but  of  others  (i.  e.,  an  im- 
partial jury),  to  be  injurious,  not  alone  to  the  feelings 
but  to  the  reputation,  is  actionable.  Should  it  be  thought 
that  it  is  a  hard  rule  that  is  applied  in  this  case,  it  is 
only  necessary  to  call  attention  to  the  fact  that  a  ready 
remedy  is  to  be  found  in  legislation.  We  are  not  satis- 
fied, however,  that  the  rule  is  a  hard  one,  and  think  that 

7— Murray  v.  Engraving  Co.,  28  ing  Box  Co.,  171  N.  Y.  538,  64  N. 
N.  Y.  Supp.  271.  E.  Rep.  442,  reversing  s.  c.  71  N. 

8 — ^Roberson  v.  Rochester   Fold-     Y.  Supp   876. 


238  HOPKINS   ON    TRADEMARKS.  [§93 

the  consensus  of  opinion  must  be  that  the  complainants 
contend  for  a  much  harder  one."" 

The  onlj^  case  in  which  the  question  of  the  existence 
of  the  right  of  privacy  has  been  brought  before  the  fed- 
eral courts  is  one  which  the  widow  and  children  of 
George  H.  Corliss,  an  inventor,  brought  to  enjoin  the 
publication  of  a  biographical  sketch  and  portrait  of  Mr. 
Corliss.  The  plaintiffs  put  their  case  squarely  upon  the 
proposition  that  the  proposed  publication  would  be  an 
invasion  of  the  right  of  privacy  which  a  court  of  equity 
should  prote<!t.  There  was  some  discussion  upon  the 
question  whether  Mr.  Corliss  was  a  public  or  a  private 
character.  The  court  distinctly  denied  the  existence  of 
any  right  of  privacy  which  it  could  recognize,  saying 
that  under  the  law  "one  can  speak  and  publish  what 
he  desires,  provided  he  commits  no  offense  against 
public  morals  or  private  reputation.  "^^  The  opinion  pro- 
ceeds flatly  on  the  theory  that  a  court  of  equity  has  no 
power  to  restrain  a  libelous  publication.^^  At  the  same 
time  the  publication  of  the  portrait  was  enjoined  because 
the  original  had  been  obtained  by  the  defendant  from 
the  plaintiifs  on  certain  conditions  which  it  had  not  com- 
plied with. 

Upon  the  motion  to  dissolve  the  injunction  certain  ad- 
ditional evidence  had  been  adduced,  and  the  court  in  its 
opinion  finds  the  fact  to  be  that  the  defendant  had  ob- 
tained the  portrait  from  a  photograph;  and  that  Mr. 
Corliss  was  in  fact  a  public  character.  The  court  says: 
''The  distinction  in  the  case  of  a  picture  or  photograph 
lies,  it  seems  to  me,  between  public  and  private  charac- 

9_Atkinson  v.  John  E.  Doherty         11— Boston   Diatite  Co.   v.   Flor- 

&  Co..  121  Mich.  372,  80  N.  W.  Rep.  ence  Mfg.  Co.,  114  Mass.  69;  Bran- 

285-289.  dreth  v.  Lance,  8  Paige,  24;  Kid<l 

10— Corliss  V.  E.  W.  Walker  Co.,  v.  Horry,  28  Fed.  Rep.  773. 
57  Fed.  Rep.  434. 


§  93]  TRADE  SECRETS.  239 

ter.  A  private  individual  should  be  protected  against 
the  publication  of  any  portraiture  of  himself,  but  where 
an  individual  becomes  a  public  character  the  case  is 
different.  A  statesman,  author,  artist,  or  inventor,  wiio 
asks  for  and  desires  public  recognition,  may  be  said  to 
have  surrendered  this  right  to  the  i>ublic."^^ 

The  right  of  privacy  has  been  recognized  by  the  Pat- 
ent Office,  and,  as  to  portraits  of  living  individuals,  the 
Act  of  1905  prohibits  their  registration  without  the  con- 
sent of  the  person.'^ 

In  a  recent  opinion,  the  Supreme  Court  of  Georgia, 
per  Cobb,  J.,  has  sustained  the  right  of  privacy  as  of 
common  law  origin,  in  the  following  language: 

*'The  right  of  privacy  has  its  foundation  in  the  in- 
stincts of  nature.  It  is  recognized  intuitively,  conscious- 
ness being  the  witness  that  can  be  called  to  establish  its 
existence.  x\ny  person  whose  intellect  is  in  a  normal 
condition  recognizes  at  once  that,  as  to  each  individual 
member  of  society,  there  are  matters  private,  and  there 
are  matters  public,  so  far  as  tlie  individual  is  concerned. 
Each  individual  as  instinctively  resents  any  encroach- 
ment by  the  public  upon  his  rights  which  are  of  a  private 
nature  as  he  does  the  withdrawal  of  those  of  his  rights 
which  are  of  a  public  nature.     A  right  of  privacy  in 

12 — Corliss  V.  E.  W.  Walker  Co.,  sent  of  Dewey  to  appropriate  it  as 

64   Fed.  Rep.   280-282.  a  trademark.    A  living  celebrity  is 

13 — Thus    in    a    case  presented  entitled  to  protection  from  the  or- 

to  the  Patent  Ofl5ce  where  the  ap-  dinary     trader."     Duell,     Commis- 

plicant  sought  to  register  the  mark  sioner,  in  Ex  parte  Mclnnemey,  85 

"Dewey's     Chewies,"     for     confec-  Off.  Gaz.  149.     The  Act  of  1905  in 

tionery.     The    commissioner    said,  §    5   contains   the   provision    "that 

in  response  to  the  applicant's  sug-  no  portrait  of  a  living  individual 

gestion   that  "Dewey's"   is  not  an  may  be  registered  as  a  trademark. 

ordinary  surname:     "I  cannot  re-  except  by  the  consent  of  such  in- 

frain  from  expressing  the  opinion  dividual,   evidenced   by  an  instrn- 

that  even  if  it  be  registrable,  no  ment  in  writing." 
one  has  the  right  without  the  con- 


240  HOPKINS   ON    TRADEMARKS.  [§93 

matters  purely  private  is  therefore  derived  from  natural 
law." 

"The  injuria  of  the  Roman  law,  sometimes  translated 
'injury'  and  at  other  times  'outrage,'  and  which,"  says 
the  court,  ''is  generally  understood  at  this  time  to  con- 
vey the  idea  of  legal  wrong, was  committed,  not 

only  by  striking  with  the  fists  or  with  the  club  or  lash, 
but  also  by  shouting  until  a  crowd  gathered  around  one, 
and  it  was  an  outrage  or  legal  wrong  to  merely  follow 
an  honest  woman  or  young  boy  or  girl ;  and  it  was  de- 
clared in  unequivocal  terms  that  these  illustrations  were 
not  exhaustive,  but  that  an  injurj^  or  legal  wrong  was 
committed  'by  numberless  other  acts.'  Sandar,  Just. 
Hammond's  ed.  499;  Poste,  Inst,  of  Gains,  3d  ed.  449. 
The  punishment  of  one  who  had  not  committed  any 
assault  upon  another,  or  impeded  in  any  way  his  right 
of  locomotion,  but  who  merely  attracted  public  attention 
to  the  other  as  he  was  passing  along  a  public  highway  or 
standing  upon  his  private  grounds,  evidences  the  fact 
that  the  ancient  law  recognized  that  a  person  had  a  legal 
right  'to  be  let  alone,'  so  long  as  he  was  not  interfering 
with  the  rights  of  other  individuals  or  of  the  public.  "^^ 

The  decision  of  the  Georgia  Court  was  unanimous. 
Judge  Parker's  opinion  in  the  case  of  Roherson  v. 
Rochester  Folding-Box  Co.  was  concurred  in  by  three, 
and  dissented  from  by  the  other  three  judges.  A  com- 
parison of  the  opinions  of  Judge  Parker  and  Judge 
Cobb  discloses  the  best  arguments  for  and  against  the 
existence  of  the  right  of  privacy;  that  of  Judge  Cobb  is 
well  reasoned,  and  admirably  stated;  that  of  Judge 
Parker  is  more  concisely  expressed,  and  certainly  as  well 
grounded  in  reason.  The  conservative  views  of  Judge 
Parker  are  summed  up  in  the  following  words:     "The 

14 — Pavesich  v.  New  England  Life  Ins.  Co.,  50  S.  E.  Rep.  68. 


§93]  TRADE  SECRETS.  241 

legislative  body  could  very  well  interfere  and  arbitrarily 
provide  that  no  one  should  l^e  permitted  for  his  own 
selfish  puq)ose  to  use  the  picture  or  the  name  of  another 
for  advertising  purposes  without  his  consent.  In  such 
event  no  embarrassment  would  result  to  the  general  body 
of  the  law,  for  the  rule  would  be  applicable  only  to 
cases  provided  for  by  the  statute.  The  courts,  however, 
being  without  authority  to  legislate,  are  required  to 
decide  cases  upon  principle,  and  so  are  necessarily  em- 
barrassed by  precedents  created  by  an  extreme,  and 
therefore  unjustifiable,  application  of  an  old  princi- 
ple.'"^ 

15 — Roberson  v.  Rochester  Fold-    see  S.  C,  65  N.  Y.  Supp.  1109,  71 
.'ng   Box   Co..  171   N.   Y.   540.    For     N.  Y.  Supp.  876. 
the  opinions  of  the  courts  below. 


!• 


CHAPTER  Vin. 

INFRINGEMENT. 

§94.      Of    infringement    generally.— The    word    ''in- 
fringement ' '  is  difficult  of  exact  definition.    For  the  pur- 
poses of  the  present  discussion,  its  broadest  meaning, 
that  of  the  infraction  or   invasion   of   another's  trade 
rights,  by  passing  off,  or  attempting  to  pass  off,  upon 
the  public  one's  own  goods  as  his,  may  suffice.     As  to 
technical  trademark  infringement,  it  should  be  more  nar- 
rowly defined  as  the  infraction  or  invasion  of  any  por- 
tion of  the  mark,   symbol  or  device  in  which  one  has 
acquired  a  right  of  property,  either  by  way  of  reproduc- 
tion in  fac-simile,  or  imitation.     An  English  text-writer 
has  thus  defined  it:     "Infringement  is  the  use  by  the 
defendant,    for    trading    purposes,    in    connection    with 
goods  of  the  kind  for  which  the  plaintiff's  right  to  exclu- 
sive use  exists,  not  being  the  goods  of  the  plaintiff,  of 
a   mark  identical  with   the   plaintiff's   mark,   or  either 
comprising  some  of  its  essential  features  or  colourably 
resembling  it,  so  as  to  be  calculated  to  cause  the  goods  to 
be  taken  by  ordinary  purchasers  for  the  goods  of  the 
plaintiff."^     Vice-Chancellor  Shadwell  stated  the  rule  to 
be  that,  if  a  mark  contains  twenty-five  parts  and  but  one 
is   taken    (i.   e.,  imitated   or  copied),   liability  has  been 
created  thereby,  and  there  has  been  a  technical  infringe- 
ment.^ 

1 — Kerly    on    Trademarks      (2(i  pirated."    Filley  v.  Fassett,  44  Mo. 

ed.,  London,  1901),  p.  363.  173;     Cox,  530;    Seb.  313.     And  to 

2 — Guinness  v.  Ullmer,  10  L.  T.  the  same  effect,  Braham  v.  Bustard, 

127;    Seb.  89.    "The  imitation  need  9  L.  T.  N.   S.   199;     1   Hem.  &  M. 

not  be  exact  or  perfect.     It  may  be  447;   11  W.  R.  1061;   2  N.  R.  572; 

limited  or  partial;    nor  is  it  requi-  Seb.  226. 
site    that     the     whole     should    be 

242 


§  95]  INFRINGEMENT.  243 

§  95.    No  trademark  in  form,  size,  material  or  color.— 

It  is  a  well  settled  rule  that  there  can  be  no  trademark 
right  in  the  mere  form,  size  or  color  •'  of  an  article  used 
commercially,  or  the  form,  size  or  color  of  the  package 
containing  it.-*  It  is  also  an  established  princi])le  that 
there  can  be  no  trademark  right  in  the  directions,  no- 
tices or  usual  advertising  matter  used  upon  or  in  de- 
scription of  merchandise.'^  There  has  never  been  a 
deviation  from  this  rule  in  the  adjudication  of  the  courts 
of  this  country.  Whenever  relief  has  been  granted 
against  an  imitator  or  counterfeiter  of  either  the  form, 
size,  color,  method  of  packing,  advertising,  or  directions 
used  by  a  legitimate  dealer,  it  has  been  granted  upon  the 
broad  theory  of  regulating  fraud,  and  not  upon  the  nar- 
rower ground  of  technical  trademark  infringement. 

There  can  be  no  technical  trademark  in  a  well  known 
material  substance,  such  as  a  tin  tag  impressed  upon 
plug  tobacco  f  nor  in  a  method  of  packing  merchandise  ;^ 
or  a  display  card,  with  horizontal  lettering,  for  hooks 

3— Victor    Talking   Machine   Co.  28  W.  R.  330;  Van  Camp  Packing 

V.  Armstrong,  132  Fed.  Rep.  711.  Co.   v.   Cruikshanks    Bros.    Co.,   90 

4 — Moorman  v.  Hoge,  2  Sawyer,  ^^^-     Rep.     814;     Von    Mumm    v. 

78;       Harrington     v.      Libby,     14  Witteman,  85  Fed.  Rep.  966;    Von 

Blatchf.    128;     Ball   v.    Siegel,   116  Mumm  v.  Witteman   (2),  33  C.  C. 

111.  143;  Enoch  Morgan's  Sons  Co.  A.  404,  91  Fed.  Rep.  126;   Fleisch- 

V.  Troxell,  89  N.  Y.   292;     Sawyer  mann  v.  Starkey,  25  Fed.  Rep.  127; 

V.    Horn,   4    Hughes,    239;     1    Fed.  Brown  v.  Doscher,  147  N.  Y.  647-651; 

Rep.  24;    Manhattan  Medicine  Co.  Charles    E.    Hires    Co.  v.    Consu- 

V.  Wood,  108  U.  S.  218;    Re  Kane  mers'    Co.,    41    C.    C.    A.    71.    100 

&  Co.,  9  Off.   Gaz.   105;    Liggett  &  ^ed.  Rep.  809-811;   Flagg  Mfg.  Co. 

Myer  Tob.   Co.  v.   Hynes,   20   Fed.     v-  Holway,  —  Mass.  ,  59  N.  E. 

Rep.  883;    Fairbanks  v.  Jacobus,  14  Rep.  667;     E.  Regensburg  &  Sons 

Blatchf.  337;    Fed.  Case  No.  4608;  v.   Juan   F.   Portuondo  Cigar  Mfg. 

Wilcox  &  Gibbs    Sewing    Machine  Co.,  136  Fed.  Rep.  866,  869. 

Co.   V.  Gibbons.    21     Blatchf.   431;  5— Candee  v.  Deere,  54  HI.  462; 

Brill  V.  Singer  Mfg.   Co.,  41   Ohio  Ball  v.  Siegel.  116  111.  143. 

St.    127;     Re    Whitaker,    Newton's  6— Lorillard    v.    Pride,    28   Fed. 

Dig.  130;    Adams  v.  Heisel,  31  Fed.  Rep.  434. 

Rep.    279;     Lorillard   v.    Pride,   28  7 — Davis  v.  Davia,  27  Fed.  Rep. 

Fed.  Rep.  434;    Davis  v.  Davis,  27  490. 

Fed.  Rep.  490;   Nuthall  v.  Vining, 


244  HOPKINS   ON    TRADEMARKS.  [§95 

and  eyes;^  but  a  fraudulent  imitation  of  another's  tin 
tag  has  been  restrained;''  and  injunctions  against  the 
fraudulent  use  of  another's  style  of  package  and  method 
of  packing  ^^  are  frequent,  in  the  absence  of  any  claim 
to  a  technical  trademark  right  in  the  complainant. 

The  courts  have  been  averse  to  recognizing  a  trade- 
mark right  in  anything  calculated  to  be  useful,  aside 
from  indicating  origin  or  ownership.  So,  in  holding  that 
there  was  no  trademark  right  in  a  series  of  indentations 
in  plug  tobacco,  so  arranged  as  to  serve  as  guides  in  cut- 
ting the  plug  into  pieces  of  one  ounce  each,  Judge 
Blodgett  said :  ' '  One  of  the  piinciples  running  through 
the  law  of  trademarks  is  that  there  need  be  no  utility 
attached  to  the  trademark  itself— that  is,  it  shall  have 
no  useful  purpose  in  connection  with  the  goods  further 
than  to  show  the  origin  or  manufacture."^^ 

There  may  be  combinations  of  form  and  color  with 
other  things,  which  will  entitle  the  owner  to  relief 
against  one  duplicating  his  article.  Thus  in  a  case  where 
the  defendant  duplicated  the  plaintiff's  talking  machine 
records,  injunction  issued  against  the  ''manufacture  and 
sale  of  disk  records,  black  or  nearly  black  in  color,  with 
a  red  seal  center  inscribed  with  decoration  and  letters  in 
gilt,  when  such  records  contain  the  shop  numbers  or 
catalogue  numbers  of  complainant's  disk  records,  or 
when  the  sound  recording  grooves  thereon  are  copies  of 
the  grooves  on  complainant's  disk  records. "^- 

Finally,  it  is  obvious,  that  where  the  resemblance  re- 
sides in  particulars  of  packages  which  have  become  com- 
mon to  the  trade,  no  relief  can  be  granted.^  ^     A  mark, 

8 — De  Long  Hook  &  Eye  Co.  v.  11 — Dausman  &  Drummond  To- 

Francis  Hook  &  Eye  Co.,  118  Fed.  bacco  Co.  v.  Ruffner,  Fed.  Case  No. 

Rep.  938.  3,585,  15  Off.  Gaz.  559. 

9— Lorillard  v.  Wright,  15  Fed.  12— Victor  Talking  Machine  Co. 

Rep.  383.  ^-  Armstrong,  132  Fed.  Rep.  711. 

10— Washington    Medallion    Pen  13— Schenker  v.  Awerbach,  85  N. 

Co.  V.  Easterbrook,  Fed.  Case  No.  Y.  Supp.  129. 
17,246a. 


§  96J  JNFKINGEMENT.  245 

consisting  of  a  brown-coloied-paper  cigar-band  of  pecu- 
liar shape,  has  been  held  to  be  invalid,  Judge  McPherson 
saying,  "Certainly  the  color  alone  could  not  be  appro- 
priated by  the  complainant  as  a  trademark,  nor  the 
shape  alone,  nor  the  material  alone ;  and  even  the  combi- 
nation of  these  three  elements  could  not  make  a  valid 
trademark,  because  neither  singly  nor  in  combination  do 
t  ey  point  to  the  complainant  as  the  source  from  which 
the  goods  are  derived."^* 

§96.  The  early  adjudications.— The  endeavor  of  the 
dishonest  merchant  to  prey  ui^on  and  profit  by  the  rep- 
utation of  his  honest  competitor  is  always  hampered  by 
fear  of  detection.  If  a  trademark  is  counterfeited  the 
counterfeit  product  is  placed  upon  the  market  stealthily; 
where  the  offender  lacks  the  courage  to  counterfeit  he 
resorts  to  colorable  imitations,  not  of  his  competitor's 
trademark,  but  of  his  methods  of  packing  and  prepar- 
ing goods  for  sale,  thus  simulating  a  resemblance,  in  the 
words  of  Judge  Lacombe,  "sufficiently  strong  to  mislead 
the  consumer,  although  containing  variations  sufficient 
to  argue  about,  should  the  designer  be  brought  into 
court.  "^^ 

The  earliest  leading  case  involving  this  form  of  fraud- 
ulent competition  arose  between  rival  soap  manufactur- 
ers. The  plaintiffs  made  and  sold  an  article  styled 
"Genuine  Yankee  Soap."  The  defendant  put  up  a 
soap  under  the  same  style,  imitating  the  size  and  shape 
of  the  cake,  the  color  and  material  of  the  wrapper,  and  a 
hand-bill,  as  used  by  the  i)laintiffs.  There  was  a  disincli- 
nation on  the  part  of  the  court  to  decide  whether  the 
words  "Genuine  Yankee"  were  a  valid  trademark,  and 
its  decision  was  put  solely  upon  the  ground  of  unfair 
trade,  the  court  saying:    "The  defendant  is  engaged  in 

14 — E.     Regensburg   &    Sons   v.        15 — Collinsplatt  v.  Finlayson,  88 
Juan  F.  Portuondo  Cigar  Mfg.  Co.,     Fed.  Rep.  693. 
136  Fed.  Rep.  866.  869. 


246  HOPKINS   ON   TRADEMARKS.  [§  96 

a  gross  and  palpable  endeavor,  by  imitating  the  marks 
and  labels  used  by  plaintiiTs,  to  deceive  the  public  and 
obtain  patronage  which  would  in  all  probability  be 
attracted  to  the  plaintiffs.  .  .  .  They  have  adopted, 
in  reference  to  their  manufacture  (of  an  article  which 
any  and  every  one  may  manufacture  and  sell,  if  he 
please),  a  form  and  size  of  cake,  a  particular  mode  of 
covering  and  packing,  a  combination  of  three  labels  on 
each  cake,  an  exterior  hand-bill  upon  the  box,  and  have 
so  arranged  the  whole  as  to  suggest  to  any  one  desiring 
to  purchase  their  soap,  upon  an  inspection,  that  the  arti- 
cle is  theirs,  and  made  by  them,  like  that  heretofore 
made,  sold  and  known  as  their  manufacture.  All  this  the 
defendant  has  copied,  with  an  exactness  which  is  calcu- 
lated to  deceive  even  the  wary,  much  more  to  entrap 
those  who  are  not  in  the  exercise  of  a  rigid  scrutiny. 
.  .  .  Without  deciding  whether  the  defendant  may 
or  may  not  use  either  of  the  words  'Genuine'  or  'Yan- 
kee," in  any  possible  combination,  we  think  it  sufficient  to 
say  that  he  may  not  use  the  labels,  or  devices,  or  hand- 
bills which  he  is  using,  nor  any  other  like  labels,  hand- 
bills, or  devices,  in  imitation  of,  or  simulating  the  labels, 
devices,  or  hand-bills  used  by  the  plaintiffs,  as  set  forth 
in  the  bill  of  complaint,  or  any  other  similar  labels, 
devices,  or  hand-bills  calculated  to  deceive  the  public,  or 
create  the  belief  that  the  soap  he  sells  is  the  soap  made 
or  sold  by  the  plaintiffs  under  the  name  of  Genuine 
Yankee  Soap."i« 

Mr.  Rowland  Cox  has  said,^^  however,  that  the  rule 
"that  where  the  appearance  of  a  peculiar  and  original 
package  has  acquired  through  use  an  understood  refer- 
ence to  the  goods  of  a  manufacturer,  and  a  competing 
manufacturer  knowingly  imitates  the  peculiar  charac- 
teristics of  the  package,  with  intent  to  deceive  the  public, 

16— Williams  v.  Johnson  (1857),  17— Cox,  Manual,  p.  86;  note  to 
2Bos.  1;  Cox,  214.  Williams  v.  Johnson,  supra. 


§  97]  INFRINGEMENT.  247 

such  imitations  will  bo  held  to  Ixi  an  infringement  of  the 
rights  of  the  i>erson  first  using  the  package,"  can  hardly 
be  said  to  have  found  distinct  expression  prior  to  1878, 
where  it  occurs  in  the  opinion  of  Judge  Wheeler  in  Frese 
V.  Bachof.^^  And,  indeed,  that  decision,  if  not  the 
earliest,  is  still  one  of  the  clearest  in  its  enunciation  of 
the  iTile. 

§97.  Infringement  of  color.— The  cases  in  which  an 
unfair  competition  is  effected  by  means  of  infringement 
of  color  alone  are  naturally  very  few  in  number.  Where 
the  color  involved  is  common  to  the  trade,  it  will  be  dis- 
regarded in  determining  the  issue  of  infringement.^*^  In- 
deed the  case  nearest  approximating  such  an  infringe- 
ment is  one  in  which  the  complainant  and  defendant 
manufactured  stoves  of  similar  external  appearance, 
enameling  the  inside  faces  of  their  stoves  with  white 
enamel.  On  demurrer  to  the  bill  Judge  Baker  said:  "If 
the  question  for  decision  were  simply  whether  the  plain- 
tiff could  acquire  the  sole  right  to  use  white  enamel  for 
the  lining  of  the  doors  of  its  stoves  and  ranges,  it 
would  present  a  ({uestion  whose  solution  would  prove 
embarrassing.  But  the  case  made  upon  the  bill  and 
admitted  by  the  demurrer  is  that  the  defendants  are 
manufacturing  stoves  and  ranges  having  white  enamel 
doors  in  the  similitude  of  those  manufactured  by  com- 
plainant, and  with  the  fraudulent  purpose  of  palming 
them  off  upon  the  trade  and  the  luiblic  as  the  stoves  and 
ranges  manufactured  by  the  complainant.  It  is  not 
necessary  to  determine  whether  the  white  enamel  lin- 
ing, which  has  been  long  and  exclusively  used  by  the 
complainant  for  the  inner  lining  of  the  doors  of  its 
stoves  and  ranges,  constitutes  a  trademark,  or  whether 
it  does  not.     It  is  sufficient  to  justify  the  interposition 

18— Seb.  603;  13  Off.  Gaz.  635;  360.  119  Fed.  Rep.  848,  852;  Con- 
Fed.  Case  No.  5,  110.  tinental   Tobacco    Co.    v.   Larus   & 

19— Postum  Cereal  Co.  v.  Amer-  Bro.   Co.,  C.   C.   A.,    133   Fed.  Rep. 

ican  Health  Food  Co.,  56  C.  C.  A.  727. 


248  HOPKINS  ON  TRADEMAEKS.  [§97 

of  a  court  of  equity  if  the  stoves  and  ranges  manufac- 
tured by  the  defendants  are  purposely  constructed  in  the 
similitude  of  those  manufactured  by  the  complainant, 
"with  the  intention  and  result  of  deceiving  the  trade  and 
the  public,  and  inducing  them  to  purchase  the  stoves 
and  ranges  of  the  defendants  in  the  belief  that  they  are 
purchasing  the  stoves  and  ranges  of  the  complainant's 
manufacture.  The  imitative  devices  used  upon  the 
stoves  and  ranges  manufactured  by  the  defendants  are 
alleged  to  be  employed  by  them  for  the  purpose  and 
Tvith  the  result  of  deceiving  the  public,  and  thereby 
diverting  the  trade  of  the  complainant  to  the  defendants. 
This  they  have  neither  the  moral  nor  the  legal  right  to 
do."-'' 

The  question  of  its  collocation  must  always  be  con- 
sidered in  connection  with  the  question  of  infringement 
ty  the  use  of  color.  Announcing  the  opinion  of  the  fed- 
eral circuit  court  of  appeals  of  the  second  circuit.  Judge 
Lacombe  has  said:  "Color,  undoubtedly,  is  a  most  im- 
portant element  in  all  package  combinations;  but  there 
are  other  elements  as  well,  which  go  to  make  up  the 
entire  combination.  Because  a  total  change  of  color 
would  so  change  the  general  appearance  as  to  destroy 
resemblance  to  another  package,  it  by  no  means  follows 
that  color  alone  would  be  sufficient  to  produce  a  general 
appearance,  resembling  another  package.  It  would  not 
be  giving  the  complainant  a  monopoly  of  yellow  to  re- 
strain the  sale  of  a  particular  yellow  package,  where,  in 
addition  to  the  color,  a  number  of  other  elements,  each 
differing  more  or  less  from  its  analogue  in  complainant's 
package,  had  been  so  collated  together  as  to  produce 
a  general  appearance  calculated  to  delude  the  unwary 
purchaser.  "2^ 

20— Buck's  stove  &  Range  Co.  v.  C.   C.   A.   554;    reversing  s.   c,   71 

Kiechle,  76  Fed.  Rep.  758.  Fed.  Rep.  295.    To  the  same  effect 

21— N.  K.  Fairbank  Co.  v.  R.  W.  see  Allen  B.  Wrisley  Co.  v.  Geo.  E. 

Bell  Mfg.  Co.,  77  Fed.  Rep.  869,  23  Rouse  Soap  Co.,  87  Fed.  Rep.  589. 


§97] 


INFRINGEMENT. 


249 


So  that  we  find  many  cases  in  which  the  imitation  of 
color  has  been  a  material  element  in  determining  the 
question  of  infringement,--  In  a  proper  case  the  court 
will  enjoin  the  defendant  from  using  the  color  used  by 
the  plaintiff,  upon  the  theoiy  that  the  defendant  must  be 
allowed  no  advantage  out  of  the  trade  thus  obtained 
wrongfully,  but  must  establish  the  reputation  of  his 
goods  upon  merit,  and  w^ithout  benefit  of  the  imitation.-'"* 

It  may  be  said  that  in  issues  of  technical  trademark 
infringement  the  color  of  the  respective  marks  is  fre- 
quently of  controlling  importance.  Any  system  of 
registration,  to  be  effective,  ought  to  provide  for  the 
registration  of  marks  in  the  exact  coloring  which  it  is 
intended  to  apply  to  the  mark  in  use.  After  the  English 
court  of  appeals  had  discussed  this  question,-^  it  was 


22— Kerry  v.  Toupin,  60  Fed. 
Rep.  272;  Burt  v.  Smith,  71  Fed. 
Rep.  161;  Carbolic  Soap  Co.  v. 
Thompson,  25  Fed.  Rep.  625; 
Cleveland  Stone  Co.  v.  Wallace, 
52  Fed.  Rep.  431-438;  Anheu- 
ser-Busch Brewing  Co.  v.  Clarke, 
26  Fed.  Rep.  410;  Landreth  v.  Lan- 
dreth,  22  Fed.  Rep.  41;  Lorillard 
V.  Wight,  15  Fed.  Rep.  383;  Hos- 
tetter  v.  Adams,  10  Fed.  Rep.  838; 
Von  Mumm  v.  Frash,  56  Fed.  Rep. 
830;  Wellman  &  Dwire  Tobacco 
Co.  V.  Ware  Tobacco  Works,  46  Fed. 
Rep.  289;  Gail  v.  Wackerbarth,  28 
Fed.  Rep.  286;  Hires  v.  Hires,  6 
Pa.  Dis.  R.  285;  Myers  v.  Theller, 
38  Fed.  Rep.  607;  American  Brew- 
ing Co.  V.  St.  Louis  Brewing  Co., 
47  Mo.  App.  14;  Sperry  v.  Percival 
Milling  Co.,  81  Cal.  252;  Royal  Bak- 
ing Powder  Co.  v.  Davis,  26  Fed. 
Rep.  293;  Fleischmann  v.  Starkey, 
25  Fed.  Rep.  127;  Carbolic  Soap  Co. 
v.  Thompson,  25  Fed.  Rep.  625;  C. 
F.  Simmons  Med.  Co.  v.  Simmons, 
81  Fed.  Rep.  163;  Johnson  &  John- 


son V.  Bauer  &  Black,  27  C.  C.  A. 
374,  82  Fed.  Rep.  662;  reversing  s. 
c,  79  Fed.  Rep.  954;  Fischer  v. 
Blank,  138  N.  Y.  251;  Cox,  Manual, 
731;  McCann  v.  Anthony,  21  Mo. 
App.  83;  38  Off.  Gaz.  333;  Von 
Mumm  v.  Kirk,  40  Fed.  Rep.  589; 
Coats  V.  Merrick  Thread  Co.,  36 
l-ed.  Rep.  324;  Philadelphia  Nov. 
Co.  V.  Blakesley  Nov.  Co.,  40  Fed. 
Rep.  588;  Proctor  &  Gamble  Co.  v. 
Globe  Refining  Co.,  34  C.  C.  A.  405, 
92  Fed.  Rep.  357;  Johnson  v. 
Brunor,  107  Fed.  Rep.  466;  Lalance 
&  Grosjean  Mfg.  Co.  v.  National 
Enameling  &  Stamping  Co.,  109 
Fed.  Rep.  317;  National  Biscuit  Co. 
V.  Swick,  121  Fed.  Rep.  1007;  Rains 
v.  White,  (Ky.),  52  S.  W.  Rep. 
970;  Kassel  v.  Jeuda,  70  N.  Y. 
Supp.  480. 

23 — Franck  v.  Frank  Chicory 
Co.,  95  Fed.  Rep.  818-821. 

24— Re  Worthington  &  Co.'s 
Trademark.  L.  R.  14  Ch.  D.  8-18. 
See  also  Nuthall  v.  Vining,  28  W. 
R.   330;    Cartmell.   248. 


250  HOPKINS   ON   TRADEMARKS.  [§  98 

enacted  by   Parliament  that   registration  might   be    in 
oolor.-^ 

§  98.  Infringement  of  size  and  form.— The  decision  of 
the  leading  case,  Cook  S  Beniheimer  Co.  v.  Ross;^^  by 
Judge  Lacombe  in  the  circuit  court  of  the  United  States 
for  the  southern  district  of  New  York,  marked  a  distinct 
advance  in  the  scientific  development  of  the  law  of  un- 
fair comj)etition.  The  complainant  was  a  corporation 
which  had  acquired  the  sole  right  to  bottle,  at  the  dis- 
tillery the  ' '  Mount  Vernon  Rye ' '  whisky  distilled  by  the 
Hannis  Distilling  Company,  in  which  bottling  the  com- 
plainant used  a  bottle  of  distinctive  form.  The  facts 
more  fully  appear  in  the  opinion,  a  portion  of  which  is  as 
follows : 

''Complainant,  of  course,  has  no  exclusive  right  to  the 
name  'Mount  Vemon,'  and  the  labels  of  defendants  are 
in  no  sense  an  imitation  of  the  labels  of  the  complainant. 
Complainant's  case  rests  solely  on  the  form  of  package, 
which  it  claims  has  been  so  imitated  as  to  make  out  a 
case  of  unfair  competition. 

"Undoubtedly,  a  large  part  of  the  consumption  of 
whisky  is  in  public  drinking  places,  where  it  is  dispensed 
to  the  consumer  from  the  opened  bottle.  It  is  always 
desirable,  therefore,  for  a  dealer  who  wishes  to  push  the 
sale  of  his  own  goods  on  their  own  merits  to  devise,  if  he 
can,  some  earmark  more  permanent  than  a  pasted  label 
to  distinguish  them.  Complainant's  predecessors  accord- 
ingly, in  March,  1890,  adopted  a  brown  glass  bottle  of  a 

25 — The    Patents,    Designs,    and  which  the  only  distinction  is  the 

Trademarks  Act,  1883,  sec.  67.     It  use  of  a  color,  because,  practically, 

has  been  held,  under  this  section,  under  the   terms  of  the   act.  that 

that  the  mark  registered  in  color  would   give  you  a  monoply  of  all 

must  be  distinctive  apart  from  its  the    colors   of   the   rainbow."     Re 

color;    and   as  said    by    Kay,    J.:  Hanson's  Trademark,  5  R.    P.    C. 

"You  may  register  a  mark,  which  130;  L.  R.  37  Ch.  D.  112;  57  L..  J. 

is  otherwise   distinctive,   in   color,  Ch.  173;  57  L.  T.  N.  S.  859;  36  W. 

and   that   gives   you   the   right   to  R.  134;  Cartmell.  146. 

use  it  in  any  color  you  like;   but  26—73  Fed.  Rep.  203. 
you  cannot  register    a    mark    of 


§98  J  INFRINGEMENT.  251 

peculiar  square  sliapc,  unlike  any  that  liad  theretofore 
been  used  for  bottling  whisky,  or,  indeed,  so  far  as  the 
evidence  shows,  for  any  other  purpose.  It  is  a  fonn  of 
package  well  calculated  by  its  novelty  to  catch  the  eye, 
and  be  retained  in  the  romeinbraiice  of  any  one  who  has 
once  seen  it.  In  order  to  develop  and  extend  the  busi- 
ness they  expected  to  control  under  their  agreement  with 
the  Hannis  Distilling  Company,  comi)lainant  and  its 
predecessors  have  expended  more  than  $50,000  in  adver- 
tising its  said  bottling,  hi  all  these  advertisements  the 
peculiar  square-shaped  bottle  is  the  chief  and  most  promi- 
nent feature.  It  is  not  surprising,  therefore,  to  find  it 
stated  in  the  moving  affidavits  that  the  shape  and  gen- 
eral appearance  of  the  bottle  has  come  to  be  principally, 
if  not  exclusively,  relied  on  by  ordinary  purchasers  as 
the  means  of  identifying  this  bottling  of  Mount  Vernon 
whisky  from  all  other  bottlings,  the  i3urity  of  which  is 
not  guaranteed  by  the  distillers,  but  only  by  the  bottler. 
Complainant's  bottling  seems  to  have  acquired  a  high 
reputation,  large  and  increasing  quantities  of  it  being 
yearly  sold,  at  a  price  in  excess  of  that  obtained  by  other 
bottlers  of  Mount  Vernon  whisky. 

*' About  December,  1895,  defendants,  who  had  been 
dealing  in  Mount  Veraon  whisky  for  many  years,  began 
first  to  put  it  up  in  bottles,  which  are  Chinese  copies  of 
the  peculiar  square-shaped,  bulging-necked  bottles  of  the 
complainant.  Of  course  they  aver  that  this  was  with- 
out any  intention  'to  deceive  the  jDublic,  or  to  palm  off 
defendants'  goods  for  complainant's.'  They  account  for 
the  sudden  appearance  of  their  output  of  Mount  Veraon 
whisky  in  this  fonn  as  follows:  'There  was  a  demand 
for  Mount  Vernon  whisky  along  in  November  last,  and 
defendants  sought  a  convenient  and  useful  package  in 
which  to  place  their  product  upon  the  market,  and  pur- 
chased a  stock  of  bottles  of  the  square  fonn  for  that 
purpose,  without  making  a  special  design  therefor,  and 
in  the  open  market;'  and  allege  that  'such  bottles  can 


252  HOPKINS   ON   TRADEMARKS.  [§  98 

be  purchased  of  reputable  bottle  manufacturers  from 
molds  used  for  some  time  last  past.'  This  last  averment 
may  well  be  true.  The  industry  of  defendants '  counsel  has 
marshaled  here  an  arraj^  of  square-shaped  bottles  filled 
with  whisky,  which  shows  that  for  some  time  imitations 
of  complainant's  bottle  have  been  on  the  market.  But 
there  is  not  a  word  of  proof  to  trace  back  any  one  of 
these  bottles  to  a  period  anterior  to  the  adoption  of  the 
square  shape  by  complainant's  predecessor  as  a  distinc- 
tive fomi  of  package.  Despite  defendants'  denials,— and 
they  only  deny  intent  to  deceive  the  public,  liot  intent  to 
use  a  form  of  package  just  like  complainant's,— the 
court  cannot  escape  the  conviction  that  they  found  the 
square-shaped  bottle  'convenient  and  useful,'  because 
it  was  calculated  to  increase  the  sale  of  their  goods ;  and 
that  such  increase,  if  increase  there  be,  is  due  to  the  cir- 
cumstance that  the  purchasers  from  defendants  have  a 
reasonable  expectation  that  the  ultimate  consumer,  de- 
ceived by  the  shape,  will  mistake  the  bottle  for  one  of 
complainants'.  This  is  unfair  competition  within  the 
authorities,  and  should  be  restrained.  Injunction  pen- 
dente lite  is  granted  against  the  further  use  of  the 
square-shaped,  bulging-necked  bottle  as  a  package  for 
Mount  Vernon  whisk}^" 

There  never  existed  a  valid  reason  why  a  manufacturer 
should  not  be  protected  in  the  use  of  a  package  so  pe- 
culiar and  distinctive  in  size  and  shape  as  not  to  inter- 
fere with  the  packing  methods  of  the  trade  generally. 
In  this  respect  the  law  of  trademarks  fell  short  in  the 
recognition  it  should  have  extended  to  tradesmen,  who, 
like  the  Cook  &  Bernheimer  Company  in  the  case  last 
mentioned,  chose  to  distinguish  their  wares  by  distinc- 
tive packing.  On  account  of  this  deficiency  in  the  law, 
occasional  hardships  were  inflicted  upon  honest  trades- 
men and  the  dishonest  competitor  went  unwhipped  of 
justice.^     But  the  amount  of  fraudulent  trading  effected 

1— Enoch  Morgan's  Sons  Co.  v.   Troxell,  89  N.  Y.  Supp.  292. 


§98  J  INFRINGEMENT.  253 

by  means  of  this  form  of  imitation  was  sure  to  evoke  the 
ruling  of  the  leading  case  in  time,  and  there  are  numbers 
of  other  cases  in  which  an  imitation  of  size  and  form  has 
been  a  moving  ground  of  injunction.=^  The  remedy  has 
in  some  cases  been  held  to  be  dei;)endent  upon  proof  that 
the  public  has  actually  been  deceived  by  the  defendant's 
package.-'*  It  has  been  expressly  held,  indeed,  that 
•'there  is  no  unfair  competition,  apart  from  the  infringe- 
ment of  a  patent  or  trademark,  unless  the  competing 
person  so  makes  or  marks  his  goods  or  conducts  his  busi- 
ness that  purchasers  of  ordinary  caution  and  prudence, 
and  not  those  who  are  exceptionally  dull,  are  likely  to 
be  misled  into  the  belief  that  his  goods  are  the  goods  of 
somebody  else."^  But  it  is  the  probability  of  deception, 
and  not  proof  that  customers  have  actually  been  de- 
ceived, that  controls  or  should  control  in  all  cases  of  un- 
fair competition  as  well  as  in  cases  of  technical  trade- 
mark infringement.  A  learned  English  judge  has  asked : 
**\Miy  should  we  be  astute  to  say  that  (the  defendant) 
cannot  succeed  in  doing  what  he  is  straining  every  nerve 
to  do!"'"'   Where  the  fonn  and  size  of  a  package  have  be- 

2 — Charles  E.  Hires  Co.  v.  Con-  4 — Allen,  J.,  in  Dover  Stamping 

Burners'    Co.,    100    Fed.    Rep.    809;  Co.  v.  Fellows,  163  Mass.  191;    40 

Apollinaris   Co.   v.    Brumler,    Cox,  N.  E.  Rep.  105,  28  L.  R.  A.  448;  47 

Manual,  429;   Hostetter  v.  Adams,  Am.  St.  Rep.  448;  citing  Gilman  v. 

10  Fed.  Rep.  838;   Sawyer  v.  Kel-  Hunnewell,  122  Mass.  139;   Singer 

logg,   7   Fed.   Rep.    720;    Sperry   &  Mfg.  Co.  v.  Wilson,  2  Ch.  D.  434- 

Co.  V.  Percival  Milling  Co.,  81  Cal.  447;    Brill   v.   Singer   Mfg.   Co.,   41 

252;    Noera  v.   Williams  Mfg.  Co.,  Ohio    St.    127;    52   Am.    Rep.    74; 

158  Mass.  110;   Moxie  Nerve  Food  Robertson  v.  Berry,  50  Md.  591;  33 

Co.   v.   Baumbach,    32    Fed.    Rep.  Am.  Rep.  328.    To  the  same  effect, 

205 ;  Kerry  v.  Toupin,  60  Fed.  Rep.  Van  Camp   Packing  Co.   v.   Cruik- 

272;    Burt  v.  Smith,  71  Fed.  Rep.  shanks   Bros.   Co.,    90    Fed.     Rep. 

161;     Hildreth    v.    McDonald,    164  814;   Von  Mumm  v.  Witteman.  85 

Mass.    16;    49    Am.    St.    Rep.    440;  Fed.   Rep.   966;    affirmed,    91    Fed. 

Royal  Baking  Powder  Co.  v.  Davis,  Rep.  126,  33  C.  C.  A.  404. 

26  Fed.  Rep.  293.  5 — Lindley.  L.  J.,  in  Slazenger  v. 

3— Hildreth   v.   D.    S.   McDonald  Feltham,  6  R.  P.  C.  538. 
Co.,  164  Mass.  16;  41  N.  E.  Rep.  56, 
49  Am.  St.  Rep.  440. 


254  HOPKINS   ON   TRADEMARKS.  [§98 

come  common  to  a  trade,  resemblance  in  either  or  both 
of  tliese  particulars  is  not  actionable.^ 

In  all  of  this  class  of  cases  the  general  rule  of  trade- 
mark law  applies,  that  it  is  immaterial  whether  the  goods 
sold  by  the  defendant  are  inferior  or  superior  to  those  of 
the  plaintiff.  Thus  in  an  early  case  Judge  Morris  said: 
''AMiat  we  decide  is  that  whether  the  complainant  has  a 
trademark  or  not,  as  he  was  the  first  to  put  up  bluing  for 
sale  in  the  peculiarly  shaped  and  labeled  boxes  adopted 
by  him,  and  as  his  goods  have  become  known  to  pur- 
chasers, and  are  bought  as  the  goods  of  the  complainant 
by  reason  of  their  peculiar  shape,  color  and  label,  no 
person  has  the  right  to  use  the  complainant's  form  of 
package,  color  or  label,  or  any  imitation  thereof,  in  such 
manner  as  to  mislead  purchasers  into  buying  his  goods 
for  those  of  the  complainant,  whether  they  be  better  or 
worse  in  quality."^ 

In  connection  with  this  branch  of  our  subject,  it  should 
be  noted  that,  in  the  absence  of  a  patent,  every  one  is  at 
liberty  to  reproduce  merchandise  or  machinery  made  by 
another.  In  the  language  of  the  Massachusetts  court, 
"  in  the  absence  of  a  patent,  the  freedom  of  manufacture 
cannot  be  cut  down  under  the  name  of  preventing  unfair 
competition."*  In  an  earlier  case,  it  was  said  that 
''apart  from  these  {i.  e.,  patents  for  inventions  or 
designs)  any  one  may  make  anything  in  any  form,  and 
may  copy  with  exactness  that  which  another  has  pro- 
duced, without  inflicting  any  legal  injury,  unless  he 
attributes  to  that  which  he  has  made  a  false  origin,  by 
claiming  it  to  be  the  manufacture  of  another  person. ' '  ^ 
In   a  later  case.   Judge  Severens  has   thus   stated   the 

6 — Allen  B.  Wrisley  Co.  v.  Geo.  Co.  v.  Holway,  Mass.,  59  N.  E.  Rep. 

E.   Rouse   Soap  Co.,  87  Fed.   Rep.  667.    To  the  same  effect  see  Piaget 

589.  V.  Headley.  68  N.  Y.  Supp.  351. 

7— Sawyer  v.  Horn,  1  Fed.  Rep.  9— Johnson,  J.,  in  Fairbanks  v. 

24-38.  Jacobus.  14  Blatch.,  337,  339;   Fed. 

8— Holmes,  C.  J.,  in  Flagg  Mfg.  Case  No.  4608,  and  to  the  same  ef- 


§  99j  INFRINGEMENT.  255 

rule:  "Without  doubt,  a  party  may  adopt  distinguish- 
ing marks  to  denote  the  origin  or  production  as  being 
his  own,  or  he  may  adopt  some  other  })eculiar  method  of 
distinguishing  his  own  goods,  and  thus  retain  the  benefit 
of  the  good  reputation  wliich  lie  has  acquired  for  them. 
But  the  very  idea  of  distinguishing  them  implies  that  it 
cannot  be  done  by  such  universal  characteristics  as  be- 
long to  other  goods  of  the  kind  and  which  the  general 
public  have  the  undoubted  right  to  use."^^  But  in  mak- 
ing an  article  whose  structure  may  be  made  by  anyone,  it 
is  nevertheless  unlawful  to  imitate  its  ensemble  as  made 
by  another,  with  the  purpose  and  effect  of  misleading  the 
public." 

§  99.  Intent  and  scienter.— It  was  at  first  held  that 
equity  could  only  administer  relief  ancillary  to  that 
offered  by  the  courts  of  law.  It  is,  indeed,  difiicult  to 
apprehend  on  what  ground  this  reluctance  to  interfere  in 
trademark  cases  arose.  The  only  explanation  vouch- 
safed is,  that  when  chancer^'  undertook  to  act  it  was  ' '  ex- 
ercising a  jurisdiction  over  legal  rights.  "^^  g^t  whether 
at  law  or  in  equity,  the  doctrine  of  the  common  law  pre- 
vailed, that  the  defendant  must  be  shown  to  have  guilty 
knowledge  or  fraudulent  intent.^ ^ 

In  1838  the  rule  was  distinctly  announced  that  courts 
of  equity  ''will  act  on  the  principle  of  protecting  prop- 
erty alone,  and  it  is  not  necessary  for  the  injunction  to 
prove  fraud  in  the  defendant.  "^^    This  rule  is  now  uni- 

fect,  see  Dover  Stamping    Co.    v.  12 — Motley  v.  Downman,  3  Mylne 

FeUows,   163   Mass.   191;    40  N.  E.  &  Cr.  1-14. 

Rep.  105,  28  L.  R.  A.  448,  47  Am.  13— Singleton  v.  Bolton,  3  Doug. 

St.  Rep.  448;  Marvel  Co.  v.  Tullar  293;    Morrison  v.   Salmon,   2  Man. 

Co..  125  Fed.  Rep.  829.  &  G.  385;   Crawshay  v.  Thompson, 

10 — Globe-Wernicke  Co.   v.   Fred  4  Man.  &  G.  357;  Taylor  v.  Ashton, 

Macey  Co.,  56  C.  C.  A.  304.  119  Fed.  11  M.  &  W.  402;  Rodgers  v.  Nowill, 

Rep.  696,  704.  5  C.  B.  109;   Myers  v.  Baker,  3  H. 

11— Globe-Wernicke  Co.  v.  Brown  &  N.  802;   Sykes  v.  Sykes,  3  B.  A 

&  Besly,  57  C.  C.  A.  344,  121  Fed.  C.  541;  5  D.  &  R.  292. 

Rep.  90.  14 — Millington  v.  Fox,  3  Mylne 

&  Cr.  338. 


256 


HOPKINS   ON   TRADEMARKS. 


[§99 


versally  recognized  in  technical  trademark  cases.^^  It  is 
tmnecessaiy  to  show  that  the  defendant  knew  that  liis 
trademark  resembled  any  other  trademark,^ "^  and  it  fol- 
lows that  it  need  not  be  shown  that  he  knew  whose  mark 
his  resembled  ;^^  and,  the  intent  of  the  defendant  being 
immaterial,  the  fact  that  he  intended  to  infringe  plain- 
tiff's rights  will  not  entitle  the  plaintiff  to  relief  if  the 
defendant's  acts  do  not  amount  to  trademark  infringe- 
ment or  unfair  competition.^^ 

There  is  a  line  of  demarkation,  to  be  noted  in  this  re- 
gard, between  the  class  of  unfair  trade  cases  which 
involves  a  technical  trademark  and  that  which  does  not. 
Wliere  a  plaintiff  establishes  by  competent  proof  his 
title  to  the  specific  trademark,  infringement  is  shown  by 
comparison  with  the  defendant's  mark.  The  resemblance 
of  the  defendant's  mark  creates  a  presumption  of  fraud.^^ 


15 — Glenny  v.  Smith,  2  Drew.  & 
Sm.  476;  11  Jur.  N.  S.  964;  13  L. 
T.  N.  S.  11;  13  W.  R.  1032;  6  N. 
R.  363;  Seb.  247;  Filley  v.  Fassett, 
44  Mo.  173;  Cox,  530;  Seb.  313; 
Amoskeag  Mfg.  Co.  v.  Garner  (1), 
55  Barb.  151;  6  Abb.  Pr.  N.  S. 
265;  Cox,  541;  Seb.  314;  Holmes, 
Booth  &  Haydens  v.  Holmes,  Booth 
&  Atwood  Mfg.  Co.,  37  Conn.  278; 
9  Am.  Rep.  324;  Seb.  340;  Singer 
Mfg.  Co.  V.  Wilson,  3  App.  Cas. 
376-391;  Colman  v.  Crump,  70  N. 
Y.  573;  16  Alb.  L.  J.  352;  Seb.  579; 
Shaw  V.  Pilling,  175  Pa.  St.  78-87; 
Wotherspoon  v.  Currie,  L.  R.  5  H. 
L.  508-517;  McLean  v.  Fleming,  96 
U.  S.  245-253;  Liggett  &  Myer  Tob. 
Co.  V.  Hynes,  20  Fed.  Rep.  883;  C. 
F.  Simmons  Med.  Co.  v.  Mansfield 
Drug  Co.,  93  Tenn.  84;  Elgin  Nat. 
Watch  Co.  V.  Illinois  Watch  Case 
Co.  (2),  179  U.  S.  665-674;  Craven- 
ette  Co.  V.  Benjamin,  105  Fed.  Rep. 
621;  American  Grocer  Pub.  Co.  v. 
Grocer  Pub.  Co.,  25  Hun,  398. 


16 — Kinahan  v.  Kinahan,  15  Ir. 
Ch.  75;  Orr-Ewing  &  Co.  v.  Grant, 
2  Hyde,  185;  Singer  Mfg.  Co.  v. 
Loog,  18  Ch.  D.  412;  Harrison  v. 
Taylor,  11  Jur.  N.  S.  408;  Edelsten 
V.  Edelsten,  1  DeG.  J.  &  S.  185; 
Burgess  v.  Hills,  26  Beavan,  244; 
Regis  V.  J.  A.  Jaynes  &  Co.,  185 
Mass.  458,  70  N.  E.  Rep.  480. 

17 — Cartier  v.  Carlile,  31  Beavan, 
292. 

18 — Kann  v.  Diamond  Steel  Co., 
89  Fed.  Rep.  706-712.  "An  inten- 
tion to  injure,  if  no  injury  be  done, 
constitutes  no  ground  for  relief." 
Jenkins,  J.,  in  G.  W.  Cole  Co.  v. 
American  Cement  &  Oil  Co.,  65  C. 
C.  A.  105,  130  Fed.  Rep.  703,  711, 
citing  §  76  of  the  first  edition  of 
this  book,  and  Centaur  Co.  v.  Mar- 
shall, 38  C.  C.  A.  413,  07  Fed.  Rep. 
785;  Postum  Cereal  Co.  v.  Ameri- 
can Health  Food  Co.,  56  C.  C.  A. 
360.  119  Fed.  Rep.  848,  852. 

19 — "A  trademark,  clearly  such, 
is  in  itself  evidence,  when  used  by 


§  lOOJ  INFRINGEMENT.  257 

But  where  the  plaintiff  has  no  trademark  there  is  no 
basis  of  comparison  such  as  existed  in  the  fonner  case, 
because  there  is  no  technical  property  right  in  the  plain- 
tiff. Mere  resemblance  between  the  goods  of  the  parties 
may  or  may  not  be  sufficient  to  establish  the  right  to 
injunction.  It  must  be  established  that  the  defendant 
is  unfairly  competing  with  the  plaintiff;  his  fraud  must 
be  proven  directly  or  by  inference.  In  a  recent  opinion 
Judge  Baker  says:  "While  the  idea  of  fraud  or  imposi- 
tion lies  at  the  foundation  of  the  law  of  technical  trade- 
marks as  well  as  the  law  of  unfair  competition,  it  must 
be  borne  in  mind  that  fraud  may  rest  in  actual  intent 
shown  by  the  evidence,  or  may  be  inferred  from  the  cir- 
cumstances, or  may  be  conclusively  presumed  from  the 
act  itself.  In  the  case  of  unfair  competition  the  fraudu- 
lent intent  must  be  shown  by  the  evidence,  or  be  infer- 
able from  the  circumstances,  while  in  the  case  of  the  use 
by  one  trader  of  the  trademark  or  trade-symbol  of  a 
rival  trader,  fraud  will  be  presumed  from  its  wrongful 
use."-o 

And  the  United  States  supreme  court  states  the  iiile  to 
be  that  "the  deceitful  representation  must  be  made  out 
or  be  clearly  inferable  from  the  circumstances."-^ 

§  100.  What  persons  liable.— With  the  establishment 
of  the  rule  that  mala  )nens  need  not  be  shown,--  it  fol- 
lowed that  liability  for  infringement  was  extended  to 

a  third  party,  of  an  illegal  act.     It  20 — Church    &    Dwight    Co.    v. 

is  of  itself  evidence  that  the  party  Russ,  99  Fed.  Rep.  276-279. 

intended  to  defraud  and  to    palm  21 — Lawrence  Mfg.   Co.   v.    Ten- 

o£E  his  goods  as  another's."       Mr.  nessee  Mfg.  Co.,  138  U.  S.  537-551, 

Justice  Bradley  in  Putnam  Nail  Co.  followed   in   Gorham   Mfg.    Co.    v. 

V.  Bennett,  43  Fed.  Rep.  800.     And  Emery-Bird-Thayer    Co.,    43    C.    C. 

to  the  same  effect,  Boston  Diatite  A.  511,  104  Fed.  Rep.  243,  244. 

Co.  V.  Florence  Mfg.  Co.,  114  Mass.  22 — Wotherspoon  v.  Currie,  L.  R. 

69;    McLean  v.  Fleming,  96  U.  S.  5  H.  L.  508-517;   Saxlehner  v.  Sie- 

245;    Menendez  v.   Holt,  128  U.  S.  gel-Cooper  Co.,  179  U.  S.  42. 
514;    Lawrence  Mfg.   Co.    v.    Ten- 
nessee Mfg.  Co.,  138  U.  S.  537. 
17 


258  HOPKINS   ON   TRADEMARKS.  §  101 

many  persons  who,  in  the  absence  of  that  doctrine,  could 
not  be  reached  by  the  owner  of  the  pirated  mark.  "All 
persons  in  any  way  connected  with  the  infringement  of  a 
trademark  are  responsible  to  the  owner  for  the  injury 
done  to  his  rights."-^ 

§  101.  Of  labels,  generally.— The  dress  of  a  commer- 
cial article  usually  embodies  a  label.  The  consequence 
is  that  the  cases  refer  to  labels,  frequently,  as  though 
they  were  a  distinct  factor  in  the  law  of  unfair  compe- 
tition, to  be  treated  as  an  entity,  regardless  of  the  pres- 
ence or  absence  of  trademark  material  upon  them.  Thus 
Vice-Chancel  lor  Van  Fleet,  in  the  Court  of  Chancery  of 
New  Jersey,  has  said,  *'If  we  speak  with  accuracy,  these 
labels  cannot  be  called  'trademarks,'  but  they  serve  sub- 
stantially the  same  purpose.  They  are  the  marks  by 
which  the  complainant's  goods  are  distinguished  in  the 
markets  from  all  like  goods  put  upon  the  market  by 
other  persons,  and  are,  for  that  reason,  according  to 
many  decisions,  just  as  much  under  the  protection  of 
the  law  as  trademarks  are.  The  law  protects  them  for 
the  same  reasons,  and  in  exactly  the  same  way,  that  it 
does  trademarks.  The  leading  principle  of  the  law  on 
this  subject  is  that  no  man  should  be  permitted  to  sell 
his  goods  on  the  reputation  which  another  dealer  has 
established  in  the  market  for  his  goods,  and  this  princi- 
ple applies  with  equal  force  to  the  case  where  the  goods 
of  such  other  dealer  are  known  in  the  market  by  a  label, 
as  it  does  to  the  case  where  they  are  known  by  a  mark 
which  is  strictly  a  trademark.  No  dealer  can  lawfully 
adopt  the  label  of  another  dealer,  or  one  so  near  like  it 
as  to  lead  the  public  to  suppose  that  the  article  to  which 
it  is  affixed  was  put  upon  the  market  by  such  other 
dealer. '  '^^ 

23 — Hawley,  J.,   in   Hennessy  v.  following  Miller  Tobacco  Manufac- 

Herrmann,  89  Fed.  Rep.  669-670.  tory  Co.   v.   Commerce,    45    N.    J. 

24— Wirtz  V.  Eagle  Bottling  Co.,  Law  18,  24. 
50  N.  J.  Eq.  164,  24  Atl.  Rep.  658; 


§  102]  INFRINGEMENT.  259 

§  102.    The  engraver  or  manufacturer  of  the  label.— 

The  rule  that  equity  will  enjoin  one  who  ])articipates  in 
the  production  of  an  infringing  mark  or  label  was  first 
established  in  Guinness  v.  Ullmer,  in  1847,  in  which  case 
the  plaintiffs  were  brewers  of  i)orter,  and  the  defend- 
ants, who  were  engravers,  engraved  plates  to  be  used  in 
printing  labels  in  imitation  of  the  plaintiff's  label.-''  This 
decision  was  followed  in  1855  by  a  case  in  which  a  prin- 
ter printed  and  sold  labels  which  were  fac-similes  of  the 
plaintiff's  labels,  and  the  piracy  was  enjoined;-*'  and  the 
rule  is  now  extended  to  include  one  who  deals  in  counter- 
feit labels,  though  he  does  not  manufacture  them.-^ 

In  1877  a  label  printer  was  enjoined  by  the  superior 
court  of  New  York  from  the  manufacture  of  labels  which 
were  colorable  imitations  of  plaintiff's.  In  aflBrming  the 
decision  of  the  lower  court  the  New  York  couii  of  ap- 
peals announced  that  it  is  not  necessary  in  such  a  case 
*'to  establish  a  guilty  knowledge  or  fraudulent  intent  on 
the  part  of  the  wrong-doer. '  '-^    It  is  now  the  settled  rule 

25— Guinness  v.  UHmer,  10  L.  T.  28— Colman  v.  Crump,  70  N.  Y. 

127;   Seb.  89.  573-578;    affirming  s.   c,   40   N.   Y. 

26— Farina  v.  Silverlock,  1  K.  &  Super.   Ct.    (8   J.  &  S.)    548;    Seb. 

J.  509;  3  Eq.  Rep.  883;  24  L.  J.  Ch.  579.     The  court  of  appeals  in  this 

632;   25  L.  T.  211;   3  W.  R.  532;   6  case  further  says  (per  Allen,  J.): 

DeG.  M.  &  G.  214;  26  L.  J.  Ch.  11;  "It  is  an  infraction  of  that  right 

2  Jur.  N.  S.  1008;   27  L.  T.  277;   4  (i.   e.,   the  right  to  a   trademark) 

W.   R.   731;    52   Leg.   Obs.   342;    30  to  print  or  manufacture,  or  put  on 

L.  T.  242;    31  L.  T.  :^9;   4  K.  &  J.  the   marlcet   for  sale  and   sell   for 

650;    Seb.    130.      See    also    to    the  use,  upon  articles  of  merchandise 

same  effect,  Colman  v.  Crump,  70  N.  of  the  same   class  as  those  upon 

Y.   573;    Cuervo  v.   Jacob   Henkell  which  it  is  used  by  the  proprietor, 

Co.,  60  Off.  Gaz.  440;  50  Fed.  Rep.  any  device  or  symbol  which  by  its 

471;    Moxie   Nerve    Food     Co.     v.  resemblance     to     the     established 

Beach,  33  Fed.  Rep.  248;   De  Kuy-  trademark  will  be  liable  to  deceive 

per  v.  Witteman,  23  Fed.  Rep.  871;  the  public  and  lead  to  the  purchase 

Hildreth   v.    Sparks   Mfg.   Co.,    99  and  use  of  that  which  is  not  the 

Fed.  Rep.  484.  manufacture  of  the  proprietor,  be- 

27 — Hennessy   v.   Herrmann,    89  lieving  it  to  be  his."    From  which 

Fed.  Rep.  669;  Cantrell  &  Cochrane,  Mr.    Cox    makes    this    deduction: 

Ltd.,  V.  Wittemann,  109  Fed.  Rep.  "The  distinction  would  seem  to  be 

82.  that  where  the  facts  of  the  case 


260  HOPKINS   ON   TRADEMARKS.  [§  103 

that  "the  mere  act  of  printing  and  selling  labels  in 
imitation  of  the  complainant's  might  be  innocent,  and, 
without  evidence  of  an  illicit  purpose,  would  not  be  a 
violation  of  the  complainant's  rights."-^  Judge  Thayer, 
however,  held  that  the  court  would  presume  fraudulent 
intent  where  counterfeit  labels  were  manufactured  and 
sold  and  advertised  for  sale  by  the  defendant.^*^ 

Where  a  i)erson  induces  a  manufacturer  to  make  for 
him  goods  marked  with  the  trademark  of  a  third  per- 
son, the  manufacturer  can  hold  him  liable  for  all  money 
paid  and  expense  incurred  by  the  manufacturer  in  com- 
promising a  suit  brought  against  him  by  the  owner  of 
the  trademark.^^ 

Where  both  parties  are  in  a  similar  business,  one  will 
be  enjoined  from  buying  up  the  empty  bottles  or  other 
packages  used  by  the  other.^^ 

§  103.  Of  counterfeiting  trademarks.— A  counterfeit 
mark  is  one  which  is  a  fac-simile  (e.  g.,  an  exact  copy 
or  reproduction)  of  a  genuine  trademark.  Counterfeiting 
may  be  accomplished  either  by  using  forged  fac-simile 
trademarks,  or  by  using  genuine  trademarks  upon  goods 
substituted  for  those  of  the  owners  of  the  trademarks; 
as  by  refilling  bottles,  boxes  or  other  packages  bearing 
trademarks  after  their  original  contents  have  been  con- 
sumed. 


shcv/  that  the  printer  of  the  labels  Witteman,  23  Fed.  Rep.  871;   Cox, 

contemplated  their  use  upon  goods  Manual,  694. 

not   made   by  the    owner    of    the  30 — Carson  v.  Ury,  39  Fed.  Rep. 

mark,  the  court  will  interfere  what'  777;    Cox,   Manual,  709.     See  also 

ever  the  intent;  but  where  the  pur-  Von  Mumm  v.  Wittemann,  85  Fed. 

pose  was  that  they  should  be  hon-  Rep.  966. 

estly  used  in  such  manner  as  to  be  31 — Dixon  v.   Fawcus,  9  W.    R. 

tantamount  to  an    application    of  414;   3  Ell.  &  Ell.  537;   30  L.  J.  Q. 

the  mark  by  its  owner,  the  courts  B.  137;    7  Jur.  N.  S.  895;   3  L.  T. 

will  decline  to  interfere."    Note  to  N.  S.  693;    Seb.  194. 

Farina  v.  Silverlock,  Cox,  Manual,  32 — Evans  v.  Von  Laer,  32  Fed. 

130.  Rep.  153;  Sawyer  Crystal  Blue  Co. 

29— Wallace,  J.,  in  De  Kuyper  v.  v.  Hubbard,  32  Fed.  Rep.  388. 


§  104]  INFRINGEMENT.  261 

§  104.  Of  imitation  of  trademarks.— An  imitation  is 
a  mark  so  contrived  as  to  reseinble  an  established  trade- 
mark. The  imitation  is  actionable  only  in  cases  where, 
upon  comparison,  the  court  determines  that  the  dif- 
ference is  ''merely  colorable,"^''  or  as  stated  by  Vice- 
Chancellor  AVood:  "In  every  case  the  court  must  ascer- 
tain whether  the  differences  are  made  bo7ia  fide  in  order 
to  distinguish  the  one  article  from  them,  whether  the  re- 
semblances and  the  differences  are  such  as  naturally 
arise  from  the  necessity  of  the  case,  or  whether,  on  the 
other  hand,  the  differences  are  simply  colorable.  "^^ 

§  105.  Colorable  imitation.— As  to  what  constitutes 
colorable  imitation,  some  apparent  diversity  of  opinion 
arises  in  the  cases.  In  the  opinion  of  Vice-Chancellor 
Wood,  from  which  we  have  quoted  in  the  foregoing  sec- 
tion, he  says:  " IJesemblance  is  a  circumstance  which  is 
of  jirimary  importance  for  the  court  to  consider,  because 
if  the  court  finds,  as  it  almost  invariably  does  find  in 
such  cases  as  this,  that  there  is  no  reason  for  the  resem- 
blance, excepting  for  the  purpose  of  misleading,  it  will 
infer  that  the  resemblance  is  adopted  for  the  purpose  of 
misleading."""  But  this  dictum  is  not  convincing,  be- 
cause if  the  resemblance  is  not,  in  fact,  calculated  to 
mislead,  the  fact  that  it  was  adopted  for  the  purpose  of 
misleading  is  wholly  immaterial. 

Thus  it  has  been  held  repeatedly  that  where  there  is  no 
imitation  of  the  essential  part  of  the  trademark,  a  resem- 
blance in  particulars  common  to  the  trade  is  not  an  in- 
fringement.^" 

33— Davis  v.  Kendall.  2  R.  I.  566;  Ch.  237;  Tucker  Mfg.  Co.  v.  Boy- 
Cox,  112;  Seb.  103.  ington,  9  Off.  Gaz.  455,  Fed.  Case 

34— Taylor  v.  Taylor,  2  Eq.  Rep.  No.  14229;  Thornton  v.  Crowley,  47 

290;    23    L.   J.   Ch.    255;    22   L.   T.  N.  Y.  Super.  Ct.  527;  Price  &  Steu- 

271;  Seb.  124.  art,  455;  Coats  v.  Merrick,  36  Fed. 

35— Taylor  v.  Taylor,  supra.  Rep.  324,  45  Off.  Gaz.  347;  Marshall 

36— Portuondo  v.  Monne,  28  Fed.  v.  Hawkins,  4  N.  Z.  L.  R.  Sup.  Ct, 

Rep.    16;    Price   &   Steuart,    1115;  59;   Stachelberg  v.  Ponce   (2),  128 

Ball  V.  Siegel,  116  111.  137;  56  Am.  U.  S.  686. 
Rep.  766;   Re  Horsburgh,  53  L.  J. 


262  HOPKINS   ON   TR^VDEMARKS.  [§  106 


§  106.  The  test  of  probability  of  deception.— The  va- 
riance of  opinion  as  to  what  constitutes  colorable  imita- 
tion arises  from  the  standard  adopted  by  the  different 
courts  as  to  the  tendency  of  the  alleged  infringement  to 
deceive  the  cautious,  ordinary  or  unwaiy  customer.  It 
is  never  necessary  to  establish  actual  deception.  Lord 
Westbury  said  that  it  was  not  "necessarj^  for  relief  in 
equity  that  proof  should  be  given  of  persons  having  been 
actually  deceived,  and  having  bought  goods  with  the  de- 
fendant's mark  under  the  belief  that  they  were  the  manu- 
facture of  the  plaintiffs,  provided  the  court  be  satisfied 
that  the  resemblance  is  such  as  would  be  likely  to  cause 
the  one  mark  to  be  mistaken  for  the  other.  "^"  Accord- 
ingly it  is  no  defense  to  show  that  all  the  persons  pur- 
chasing goods  bearing  the  simulated  mark  were  aware 
that  the  goods  were  not  of  the  plaintiff's  manufacture,^* 
or  that  the  maker  of  the  spurious  goods,  or  the  jobber 
who  sells  them  to  retailers,  informs  those  who  purchase 
that  the  article  is  spurious  or  an  imitation  ;^^  the  reason 
being  that  there  is  no  assurance  that  the  retailer  will 
give  the  same  cautionary  information  to  his  customers.*^ 

37— Edelsten  v.  Edelsten,  1  DeG.  &  M.  427;    11  W.  R  1061;   2  N.  R. 

J.  &  S.  200;   9  Jur.  N.   S.  479;    11  572;  Seb.  226;  Filley  v.  Fassett,  44 

W.  R.  328;  7  L.  T.  N.  S.  768;  1  N.  Mo.  168;   Seb.  313;   Abbott  v.  Bak- 

R.   300;    and   to    the    same    effect  ers  &  Confectioners  Tea  Ass'n,  W. 

see    Monro     v.    Smith.    13     N.     Y.  N.  1871,  p.  207;  W.  N.  1872,  p.  31; 

Sup.  708;  Cox,  Manual,  724;  Dixon  Seb.     379;     Osgood     v.     Allen,     1 

v.  Fawcus,  3  Ell.  &  Ell.  537;  30  L.  Holmes,   185;    6   Am.   L.   T.   20;    3 

J.  Q.  B.  137;   7  Jur.  N.  S.  895;   3  Off.  Gaz.  124;  Seb.  410;  Job  Print- 

L.  T.  N.  S.  693;   9  W.  R.  414;   Re  ers'  Union  of  Chicago  v.  Kinsley, 

Christiansen's  Trademark,  3  R.  P.  107  111.  App.  654. 
C.  54;  Cartmell,  95;  Compania  Gen-         38 — Edelsten  v.  Edelsten,  9  Jur. 

eral  de  Tobacos  v.  Rehder,  5  R.  P.  N.  S.  479;   1  DeG.  J.  &  S.  185;   11 

C.  61;  Cartmell,  103;  Orr-Ewing  v.  W.  R.  328;  7  L.  T.  N.  S.  768;  1  N. 

Johnston,  7  A.  C.  219;  51  L.  J.  Ch.  R.  300. 

797;    46  L.  T.  216;   30  W.  R.  417;         39— Coats  v.  Holbrook,  2  Sandf. 

Cartmell,  249;  Seb.  646;  Reddaway  Ch.  586;  Seb.  79. 
&  Co.  V.  Bentham  Hemp  Spinning        40 — Chappell  v.   Davidson,  2  K. 

Co.,  9  R.   P.  C.   503;    (1892)    2   Q.  &  J.  123;   8  DeG.  M.  &  G.  1;   Seb. 

B.  639;    67  L.  T.  301;    Braham  v.  136. 
Bustard,  9  L.  T.  N.  S.  199;  1  Hem. 


§  107]  INFRINGEMENT.  263 

So  where  the  defendant  claimed  that  the  goods  bearing 
the  false  mark  were  for  his  own  family 's  use,  he  was  en- 
joined;''* and  where  the  defendants  contended  that  they 
did  not  deal  in  the  goods  bearing  the  fraudulent  mark, 
but  only  acted  as  forwarding  agents,  they  were  en- 
joined."- 

It  is  always  the  presumption,  however,  that  the  con- 
suming })urcliaser  has  no  opportunity  of  comparing  the 
conliicting  marks;  and  this  presumption  is  an  important 
element  in  passing  upon  the  probability  of  the  defend- 
ant's mark  effecting  deception."*^ 

There  is  the  further  presumption  which  has  been 
recognized  judicially,  that  the  consuming  purchaser  is 
*'apt  to  act  quickly,  and  is  therefore  not  expected  to 
exercise  a  high  degree  of  caution."^* 

§  107.  The  degree  of  resemblance  which  constitutes 
infringement.— It  follows  from  the  principles  which  we 
have  reviewed  that  the  question  of  infringement  may  be 
treated  from  the  standpoint  of  the  degree  of  approxima- 
tion between  the  conflicting  marks.  The  rule  for  apply- 
ing this  test  has  been  thus  expressed:  "What  degree  of 
resemblance  is  necessary  to  constitute  an  infringement 
is  incapable  of  exact  definition,  as  applicable  to  all  cases. 
All  that  courts  of  justice  can  do  in  that  regard  is  to  say 
that  no  trader  can  adopt  a  trademark  so  resembling  that 
of  another  trader  as  that  ordinary  purchasers  buying 
with  ordinary  caution,  are  likely  to  be  misled.  Where 
the  similarity  is  sufficient  to  create  a  false  impression 
in  the  public  mind,  and  is  of  a  character  to  mislead  and 

41 — Upmann  v.   Forester,   L.    R.         43 — Pillsbury  v.  Pillsbury -Wash- 

24   Ch.  D.   231;    52  L.  J.  Ch.  946;  burn  Co.,  64  Fed.  Rep.  841;   12  C. 

49  L.  T.  122;    32  W.  R.  28;    Cart-  C.  A.  432;    Manufacturing    Co.    v. 

mell,  331.  Trainer,   101   U.   S.   51-64;    Liggett 

42 — Upmann  v.  Elkan,  L.  R.  12  &  Myer  Tobacco  Co.  v.  Hynes,  20 

Eq.  140;  40  L.  J.  Ch.  475;  24  L.  T.  Fed.  Rep.  883. 

N.  S.  869;   19  W.  R.  867;    L.  R.  7         44— Paris  Medicine  Co.  v.  W.  H. 

Ch.  130;  41  L.  J.  Ch.  246;   25  L.  T.  Hill    Co.,    102    Fed.    Rep.,    148-151; 

N.  S.  813;   20  W.  R.  131;   Seb.  369.  42  C.  C.  A.  227. 


264  HOPKINS   ON   TRADEMARKS.  [§  108 

deceive  the  ordinaiy  purchaser  in  the  exercise  of  ordi- 
nary care  and  caution  in  such  matters,  it  is  sufficient  to 
give  the  injured  party  a  right  to  redress.  "^^ 

When  the  rule  is  stated  in  this  way,  it  comes  back  to 
tlie  original  question,  the  degree  of  care  expected  of  the 
consuming  purchaser. 

The  application  of  this  rule  has  sometimes  gone  far 
afield  from  the  ancient  rule  that  if  a  mark  contained 
twenty-five  parts,  and  but  one  was  taken  by  the  defend- 
ant, it  constituted  infringement.  Thus  in  a  Missouri 
case  the  plaintiff's  mark  for  cigars  was  the  name 
"Union  Station"  and  the  picture  of  a  building  known  by 
that  name.  The  defendant's  label  had  a  smaller  pic- 
ture of  the  same  building,  and  the  words  ''The  Gilpin- 
Union  Station."  Each  party  displayed  his  own  name 
or  initials  on  the  package.  The  facts  recited  in  the 
opinion  make  out  a  typical  case  of  technical  trademark 
infringement,  yet  the  court  denied  the  relief  sought 
solely  on  the  ground  of  the  differences  in  the  labels, 
though  the  conceded  facts  show  the  defendant  to  have 
appropriated  all  of  the  technical  trademark  matter  of 
the  plaintiff's  label.^*' 

§  108.  The  degree  of  care  expected  of  the  purchaser.— 
Mr.  Justice  Clifford  expressed  the  rule  in  these  words: 
''What  degree  of  resemblance  is  necessary  to  constitute 
an  infringement  is  incapable  of  exact  definition  as  ap- 
plicable to  all  cases.  All  that  courts  of  justice  can  do 
in  that  regard  is  to  say  that  no  trader  can  adopt  a  trade- 
mark so  resembling  that  of  another  trader  as  that  ordi- 
nary jourchasers  buying  with  ordinary  caution  are  likely 
to  be  misled. ' '  ^"^     But  further,  in  the  same  opinion,  he 

45 — McAdam,   J.,  in    Jerome    v.  nej'  Cigar  Co.,  158  Mo.  158,  59  S. 

Johnson,  59  N.  Y.  Supp.  859,  quot-  W.  Rep.  121. 

ing  the  first  two   sentences   from  47 — McLean  v.  Fleming,  96  U.  S. 

Mr.  Justice  Clifford  in  McLean  v,  245-251;  following  the  language  of 

Fleming,  96  U.  S.  245.  Lord   Cranworth  in   Seixo  v.   Pro- 

46— Nicholson  v.  Wm.  A.  Stick-  vezende,  L.  R.  1  Ch.  D.  192.     See 


§  108]  INFRINGEMENT.  265 

bases  the  decision  explicitly  upon  the  ground  that  the 
defendant's  package  *'is  well  calculated  to  mislead  and 
deceive  the  iinivary.''^*^ 

There  are  many  instances  of  similar  dicta.  We  have 
heretofore  referred  to  the  assertion  of  Vice-Cliancellor 
Shadwell,  who  said  that  **If  a  thing  contains  twenty- 
five  parts,  and  but  one  is  taken,  an  imitation  of  that  one 
will  be  sufficient  to  contribute  to  a  deception,  and  the 
law  will  hold  those  responsible  who  have  contributed  to 
the  fraud."  "^^  It  is  at  this  point  that  we  can  secure  prob- 
ably the  most  striking  proof  of  the  manner  in  which  the 
law  of  trademarks  and  the  law  of  unfair  competition 
overlap  each  other.  True,  the  function  of  the  trade- 
mark is  to  distinguish  the  goods  to  which  it  is  applied, 
and  whose  origin  or  ownership  it  indicates.  True  that 
the  purpose  of  an  intentional  infringement  is  to  draw 
away  the  trade  secured  by  the  infringed  mark  for  the 
benefit  of  the  owner  of  the  infringing  mark.  That  in- 
fringement is  to  be  determined,  not  by  the  question 
whether  any  substantial  part  of  the  trademark  is  copied 
or  duplicated  by  the  infringing  mark,  but  by  the  tendency 
of  the  pirated  mark  to  deceive  (whether  the  careful,  or- 
dinary or  unwary  purchaser  is  immaterial),  is  an  anomaly 
in  our  jurisprudence.  But  the  courts  have  persisted  in 
disregarding  the  technical  composition  and  detail  of 
trademarks,  and  have  invariably  applied  the  test  of  tend- 
ency of  the  sus}Dected  mark  to  deceive.  The  test  ignores 
the  absolute  right  of  property  which  exists  in  a  lawful 
trademark,  and  gives  the  owner  of  such  a  mark  no  other 
or  further  rights  than  are  given  the  plaintiff  who  uses 

also  Popham  v.  Wilcox,  14  Abb.  Pr.  49 — Guinness  v.  Ullmer,  10  L.  T. 

N.  S.  206;  38  N.  Y.  Super.  Ct.  274;  127.     See  also  Leather  Cloth  Case, 

66   N.   Y.    69;    23   Amer.    Rep.    22;  11  H.  L.  C.  523;    35  L.  J.  Ch.  53; 

Seb.   425;    Dawes  v.   Davies,   Seb.  11  Jur.  N.  S.  513;   12  L.  T,  N.  S. 

426.  742;  13  W.  R.  873;  Popham  v.  Wil- 

48— McLean  v.  Fleming.  96  U.  S.  cox,  66  N.  Y.  69. 
245,  at  page  256. 


266  HOPKINS   ON   TRADEMARKS.  [§  108 

only  generic  terms  to  designate  his  wares  and  perforce 
relies  upon  the  doctrines  of  unfair  competition.-'^^ 

The  broad  rule  as  stated  above  by  Mr.  Justice  Clifford 
has  been  elaborated  by  other  courts.  In  some  cases  no 
reference  is  made  to  the  care  and  caution  exjDected  to  be 
exercised  by  the  purchasing  public,^^  while  in  others  it  is 
held  that  it  must  be  shown  that  the  mark  employed  bears 
such  resemblance  to  the  complainant's  trademark  "as 
to  be  calculated  to  mislead  the  public  generally  who  are 
purchasers  of  the  article;"^-  sometimes  it  has  been  ex- 
pressed as  the  deception  of  'Hhe  ordinary  mass  of  pur- 
chasers;"^^ or,  as  by  the  Massachusetts  court,  that  in- 
junction will  not  lie  "unless  the  form  of  the  printed 
words,  the  words  themselves,  and  the  figures,  lines 
and  devices,  are  so  similar  that  any  person,  with 
such  reasonable  care  and  observation  as  the  pub- 
lic generally  are  capable  of  using  and  may  be 
expected  to  exercise,  would  mistake  the  one  for 
the  other.  "^*  The  irreverent  layman  could  not 
fail  to  note  the  remarkable  elasticity  of  the  rule  as  thus 

50 — Lord  Westbury  evidently  was  Laight,  18  Beav.  164;  Hardy  v.  Cut- 
impressed      with      this       thought  ter,  3  Off.  Gaz.  468;  Heinz  v.  Lutz, 
when  he  said,  "Imposition  on  the  146  Pa.  592,  23  Atl.  Rep.  314. 
public  is  necessary  for  the  plain-        52 — Walton  v.  Crowley,  Fed.  Case 
tiff's   title,   but   in   this   way  only,  No.  17133,  3  Blatchf.  440-447;  Com- 
that  it  is  a  test  of  the  invasion  by  pania  de  Tobacos  v.  Rehder,  5  R. 
the    defendant    of     the     plaintiff's  P.  C.  61;  Cartmell,  103. 
right  of  property;   for  there  is  no         53 — Blackwell  v.  Wright,   73  N. 
injury  if  the  mark  used  by  the  de-  C.  310-313;  Crawshay  v.  Thompson, 
fendant  is  not  such  as  is  mistaken,  4   Man.  &   G.   357;    5   Scott  N.   R. 
or  is  likely  to  be  mistaken,  by  the  562;   11  L.  J.  C.  P.  301;  Seb.  72. 
public  for  the  mark  of  the  plain-        54 — Gllman    v.    Hunnewell,    122 
tiff;    but  the  true  ground  of  this  Mass.   139-148.     It  is  only  fair  to 
court's    jurisdiction    is    property."  note  that  this  case  was  improperly 
Hall  V.  Barrows,  4  DeG.  J.  &  S.  150.  brought  as  a  trademark  case,  and 

51 — Ransome  v.  Bentall,  3  L.  J.  is  treated  as  such  by  the  court, 
Ch.  N.  S.  161;  Seb.  53;  Taylor  v.  whereas  the  facts  show  that  in- 
Carpenter  (3),  2  Sandf.  603;  11  junctive  relief  could  only  have 
Paige,  292;  Cox,  45;  Seb.  84;  Cof-  been  granted,  if  at  all,  to  restrain 
feen  v.  Bninton,  5  McLean,  256;  the  unfair  competition  of  the  de- 
Cox,  132;    Seb.  109;    Shrimpton  v.  fendant.      It   has   been    held   else- 


§  108]  INFRINGEMENT.  267 

laid  down.''"'  And  we  find  a  court  of  repute  holding  that 
"it  is  the  unwary,  and  not  the  wary,  who  are  to  be  pro- 
tected, as  most  likely  to  be  taken  in  by  the  counterfeit;"^'' 
and  another  saying  that  equity  * '  should  presume  that  the 
public  makes  use  of  the  senses  of  sight  and  hearing,  and 
that  it  is  possessed  of  a  sufficient  amount  of  intelligence 
to  note  the  difference  these  senses  convey;""'^  and  Sir 
George  Jessel  saying:  "I  am  not,  as  I  consider,  to  de- 
cide cases  in  favor  of  fools  and  idiots,  but  in  favor  of 
ordinary  English  people,  who  understand  English  when 
they  see  it."^* 

The  English  courts  have  devoted  much  time  to  specu- 
lating whether  '"most  Englishmen"  would  mistake  the 
defendant's  mark  for  the  plaintiff's,  or  whether  if  the 
mark  failed  to  deceive  "most  Englishmen"  it  still  might 
mislead  "the  ordinaiy  native  purchaser  in  Bombay  where 
the  goods  go,"  as  has  actually  been  done  in  the  opinion 
of  one  court.''^  Under  the  doctrine  so  stated,  I  will  not 
be  protected  by  injunction  in  a  case  where  the  defendant 
has  not  copied  my  trademark  sufficiently  in  detail  to 
deceive  "most  Englishmen,"  but  if  my  goods  are  sold  to 
natives  of  Africa  I  may  have  an  injunction  against  him 
if  he  engages  in  that  trade. 

where,  however,  that  the  relief  will  wary."  Von  Mumm  v.  Frash,  56 
not  be  granted  where  the  defend-  Fed.  Rep.  830-839.  The  following 
ants'  acts  are  such  as  could  deceive  cases  have  held  that  the  right  to 
only  a  careless  purchaser.  N.  K.  relief  depends  only  upon  a  degree 
Fairbank  Co.  v.  Luckel,  King  &  of  resemblance  calculated  to  de- 
Cake  Soap  Co.,  88  Fed.  Rep.  694.  ceive  the  careless  and  unwary.  Col- 
But  this  decision  was  reversed  on  man  v.  Crump,  70  N.  Y.  573,  578; 
appeal;  s.  c,  42  C.  C.  A.  376,  102  McCann  v.  Anthony,  21  Mo.  App. 
Fed.  Rep.  327-332.  83;    Wirtz   v.    Eagle   Bottling   Co.. 

55— Substantially   the   same  die-  50  N.  J.  Eq.  164.  24  Atl.  Rep.  658. 

turn  is  to  be  found  in  Ball  v.  Sie-  57 — Munro  v.  Tousey.  129  N.Y.  38. 

gel,  116  111.  137-146;  citing  Popham  58— Singer   Mfg.    Co.   v.    Wilson, 

v.  Cole,  66  N.  Y.  69.  L.   R.    2  Ch.   D.   434;    quoted   with 

56 — Swift  V.   Dey,   4   Robertson,  approval,   Munro   v.   Smith,   13   N. 

611;    Cox,    319;     Seb.     245.       And  Y.  Sup.  708. 

Judge  Benedict  has  said:     "It  is  59— Wilkinson  v.  Griffith,  8  R.  P. 

no  answer  to  say  that  the  ultimate  C.  370-374. 
purchaser    was    ignorant    or    un- 


268  HOPKINS   ON    TRADEMARKS.  [§  109 

If  we  were  to  undertake  to  deduce  a  general  rule  from 
the  cases  it  would  be  that  the  test  is  the  likelihood  of 
deception  of  the  consuming  purchaser  ;^*^  and  in  applying 
this  test  all  doubts  are  to  be  resolved  in  favor  of  the 
complainant."^ 

§  109.  Infringement  must  be  by  use  on  same  class 
of  goods.— The  English  Patents,  Designs,  and  Trade- 
mark Acts,  1883  to  1888,  provide  that  the  application  for 
registration  must  state  the  particular  goods  or  classes 
of  goods  in  connection  with  which  the  applicant  desires 
the  trademark  to  be  registered.""  A  similar  provision 
exists  in  the  act  of  congress  of  1905."^  Aside  from  these 
provisions  as  to  registration,  it  is  self-evident  that  there 
can  be  no  infringement  unless  the  two  marks  are  used 
on  the  same  class  of  goods;"*  though  in  this  country, 
owing  to  the  absence  of  the  exact  classifications  used  in 
the  English  registration  practice,  it  is  probably  more  ex- 
act to  say  that  the  marks  must  be  used  upon  goods  of  so 
similar  description  that  goods  bearing  the  defendant's 
mark  may  be  taken  for  the  manufacture  of  the  plaintiff; 
as  where  the  plaintiff  adopted  the  words  ''Lone  Jack" 
to  designate  smoking  tobacco  manufactured  by  him,  and 

60— Allegretti  Chocolate  Cream  62— Patents,  Designs,  and  Trade- 
Co.  V.  Keller,  85  Fed.  Rep.  643;  marks  Act,  1883,  Part  IV,  sec.  62, 
Collinsplatt  v.  Finlayson,  88  Fed.  subsec.  3. 
Rep.  693;  N.  K.  Falrbank  Co.  v.  63— Act  of  1905,  §  1. 
R.  W.  Bell  Mfg.  Co.,  23  C.  C.  A.  64— Re  Rabone,  Seb.  642;  Re 
554,  77  Fed.  Rep.  869-877;  Hansen  Jelly,  Son  &  Jones,  51  L..  J.  Ch.  639; 
V.  Siegel-Cooper  Co.,  (1),  106  Fed.  Re  Whiteley,  43  L.  T.  N.  S.  627; 
Rep.  690-691;  Kostering  v.  Seattle  Ainsworth  v.  Walmsley,  L.  R.  1 
Brewing  &  Malting  Co.,  116  Fed.  Eq.  518;  Hall  v.  Barrows,  4  DeG. 
Rep.  620,  54  C.   C.  A.  76.  J.  &  S.  150;    Hart  v.  Colley,  7  R. 

61—  Anheuser-Busch       Brewing  P.  C.  93;   L.  R.  44  Ch.  D.  193;   59 

Ass'n  V.  Piza,  24  Fed.  Rep.  149-151.  L.  J.  Ch.  355;   Cartmell,  154;   Jay 

That  injunction  will  be  granted  if  v.  Ladler,  6  R.  P.  C.  136;  L.  R.  40 

the  resemblance  is  "calculated   to  Ch.  D.  649;   60  L.  T.  27;  37  W.  R. 

deceive  the  unwary,  the  incautious,  505;     Cartmell,     184;     Colman    v. 

or    the    ignorant    purchaser,"    see  Crump,  70  N.  Y.  573;  Hecht  v.  Por- 

Cauffman  V.  Schuler,  123  Fed.  Rep.  ter,   9  Pac.   C.  L.  J.   569;     Soci6t6 

205.  Anonyme    v.    Baxter,    14    Blatchf. 


§  109]  INFRINGEMENT.  2(i9 

the  defendant  applied  the  same  words  to  cigarettes.  The 
court  gave  as  its  reason  for  enjoining  the  defendant  that 
he  was  holding  out  his  cigarettes  as  containing  the  plain- 
tiff's tobacco."''  And  where  the  defendants  were  selling 
shirts  under  the  name  of  "Wamyesta"  and  advertising 
them  as  made  of  "Wamyesta,"  they  were  enjoined  from 
using  that  designation  at  the  instance  of  the  WamsulU 
Mills,  whose  product  was  known  as  "Wamsutta"  mus- 
lin, and  was  not  used  by  defendants  in  the  manufacture 
of  their  shirts.""  Where  the  complainants  used  the 
words  "Collins  &  Co."  upon  metal  articles  of  their  man- 
ufacture, but  did  not  manufacture  shovels,  the  defend- 
ants were  enjoined  from  placing  those  words  on  shovels, 
they  having  exi)orted  shovels  so  marked  to  Australia, 
where  the  complainants  marketed  a  portion  of  their  out- 
put.""^ In  a  recent  case  Judge  Bradford  said :  * '  Pale  ale 
and  half-and-half  must,  as  against  an  "  infringer  of  a 
trademark  for  the  fonner,  be  treated  as  malt  liquors  sub- 
stantially similar  to  each  other  and  belonging  to  the 
same  class.  Courts  should  not  be  astute  to  recognize  in 
favor  of  an  infringer  fine  distinctions  between  different 
articles  of  merchandise  of  the  same  general  nature,  and 
should  resolve  against  the  wrong-doer  any  fair  doubt 
whether  the  public  may  or  may  not  be  deceived  through 
the  application  of  the  spurious  symbol.""'^  Where  the 
I)laintiff  was  the  manufacturer  of  "Omega  Oil,"  a  lini- 
ment extensively  advertised  as  a  remedy  for  skin  and 
scalp  diseases,  a  defendant  who  began  to  manufacture 
and  sell  a  soap  named  "Omega  Oil  Medicated  Soap," 
advertised  by   defendant  as  a  remedy  for  diseases   of 

261,    Fed.    Case   No.    8099;    Amos-  Phila.  535. 

keag  Mfg.  Co.  v.  Garner,  55  Barb.  67— Collins  Co.  v.  Oliver  Ames  fc 

151;  George  v.  Smith,  52  Fed.  Rep.  Sons,  18  Fed.  Rep.  561.     See  also 

830;  Air-Brush  Mfg.  Co.  v.  Thayer,  to  same  effect,  Eno  v.  Dunn,  L.  R. 

84  Fed.  Rep.  640.  15  A.  C.  252. 

65 — Carroll     v.     Ertheiler.     Cox,  68— Bass,     Ratcliff     &     Gretton 

Manual,  669,  1  Fed.  Rep.  688.  (Ltd.)  v.  Feigenspan,  96  Fed.  Rep. 

66— Wamsutta  Mills  v.  Allen,  12  206-211. 


270  HOPKINS   ON    TRADEMARKS.  [§  109 

llie  skin  and  scalp,  an  injunction  was  granted  the  plain- 
tiff on  the  authority  of  the  "Lone  Jack"  case,  Judge 
Blanchard  saying  that  "The  adoption  of  the  words 
"Omega  Oil'  by  defendant  was  calculated  to  deceive  the 
public  into  the  belief  that  plaintiff's  article  was  being 
put  up  for  sale  in  another  form,  at  least  into  the  belief 
that  the  soap  was  placed  on  the  market  by  plaintiff  or 
by  its  consent."*'^ 

It  is  the  necessary  converse  of  the  rule  under  con- 
sideration that  it  is  no  defense  to  an  action  for  trade- 
mark infringement  that  the  defendant  used  the  mark 
in  application  to  another  class  of  merchandise  before 
the  plaintiff"  began  his  use  of  the  mark.  Thus  where  a 
defendant  had  applied  the  word,  "Eijicure"  to  canned 
peaches  and  canned  tomatoes,  that  fact  did  not  avail  as 
a  defense,  where  the  plaintiff  was  the  first  to  apply  the 
word  to  canned  salmon,  and  the  defendant  afterwards 
began  to  apply  it  to  canned  salmon.  In  his  opinion, 
Judge  Coxe  observes:  "The  reasoning  of  some  of  the 
authorities  would  indicate  that  the  defendants  had  a 
right  to  use  the  brand  in  connection  with  other  fruit 
and  vegetables,  analogous  to  tomatoes  and  peaches,  but 
to  assert  that  they  have  the  right  to  use  it  on  all  canned 
goods  is  carrying  the  doctrine  far  beyond  any  reported 
case.  Beer  and  nails  do  not  belong  to  the  same  class 
of  merchandise  because  both  are  sold  in  kegs."'^*^ 

In  a  recent  case  in  which  the  complainant's  mark  was 
applied  to  baking  soda  and  saleratus,  and  the  defend- 
ant's to  baking  powder,  Judge  Baker  held  the  parties' 
goods  to  be  in  the  same  class  because  they  were  handled 
generally  by  the  same  class  of  dealers  and  purchased  by 
the  same  class  of  customers;  either  is  indifferently  used 
to  accomplish  the  same  object ;  so  that  they  come  in  direct 
competition  with  each  other  in  sale  and  use.     In  that 

69 — Omega  Oil  Co.  v.  Weschler,  70 — George  v.  Smith,  52  Fed. 
71  N.  Y.  Supp.  983,  984.  Rep.  830-832. 


§  110]  INFRINGEMENT.  271 

case  the  rule  is  announced  that  "goods  are  in  the  same 
class  whenever  the  use  of  a  given  trademark  or  symbol 
on  both  would  enable  an  unscrupulous  dealer  readily  to 
palm  off  on  the  unsuspecting  ])urchaser  the  goods  of 
the  infringer  as  the  goods  made  by  the  owner  of  the 
trademark,  or  with  his  authority  and  consent."  "• 

§110.  The  value  of  proof  of  fraudulent  intent.  — So 
much  is  said  of  fraudulent  intent  in  the  decisions  that  it 
is  proper  to  discuss  it  in  this  place,  in  its  relation  to  in- 
fringement. As  we  have  seen,  equity  will  restrain  the 
use  of  the  infringing  mark  without  regard  to  the  intent 
of  the  defendant.  It  is,  however,  a  matter  of  practical 
importance  to  establish  the  deliberate  fraud  of  the  de- 
fendant where  it  exists.  It  was  distinctly  held  by  Lord 
Westbury^  that  an  account  would  only  be  given  with  the 
injunction  in  respect  of  any  user  by  a  defendant  after  he 
had  become  aware  of  the  prior  ownership;'^-  and  in 
another  case,  where  defendant  claimed  to  have  bought 
counterfeit  champagne  believing  it  to  be  genuine,  an  ac- 
counting was  denied  because  of  the  absence  of  proof  of 
guilty  knowledge."^  And  the  fraudulent  intention  of 
the  defendant  must  be  shown  in  an  action  at  law,""*  or  at 
least  to  support  the  recovery  of  punitive  damages."^  But 
the  rule  is  fixed  both  in  England  and  the  United  States 
that  proof  of  fraudulent  intent,  or  actual  deception  of 
the  public,  are  alike  unnecessary  in  actions  in  equity, 
in  technical  trademark  cases ;  nor  is  it  necessar}^  in  cases 
of  trademark  infringement  or  unfair  competition  to 
prove  actual  deception  of  purchasers  where  tliere  is 
shown  "a  manifest  liability  to  deception."^*' 

71— Church     &     Dwight     Co.     v.  3  Mylno  &  Cr.  338;  Weed  v.  Peter- 

Russ,  99   Fed.  Rep.   276-280.  son,  12  Abb.  Pr.  N.  S.  178. 

72 — Edelsten  v.  Edelsten,  1  DeG.  74 — Edelsten  v.  Edelsten,  supra. 

J.  &  S.  185.  75— Faber  v.  D'Utassey.  11  Abb. 

73— Moet  V.   Couston,    33    Beav.  Pr.  N.  S.  399;  Marsh  v.  Billings,  7 

578.     See  also  Rose  v.  Loftus,  47  Cush.  322;  Cox,  118. 

L.  J.  Ch.   576;    Millington  v.  Fox,  76— Fuller  v.  Huff,  43  C.   C.  A. 


272  HOPKINS   ON   TRADEM^\JtKS.  [§  111 

§  111.  The  manner  of  establishing  fraudulent  in- 
tent.—The  inspection  of  the  two  marks  in  controversy 
is  the  main  test  of  the  alleged  resemblance/'^  although 
the  testimony  of  expert  witnesses  familiar  with  the  trade 
and  the  habits  of  customers  is  of  weight."**  So,  for  ex- 
ample, where  the  plaintiff's  mark  was  a  tin  star,  and 
the  defendant's  a  tin  buzz-saw,  both  affixed  in  use  upon 
plug  tobacco,  the  court  could  have  small  difficulty  in 
inferring  fraudulent  intent.^'-*  Among  other  matters  con- 
sidered by  the  courts  as  probative  of  the  defendant's  in- 
tent are  false  representations  of  securing  awards  at  an 
exhibition  ;*^'^  the  fact  that  defendant,  who  adopted  as 
a  mark  for  his  factory  the  words  "Norfolk  House," 
previously  used  by  plaintiff,  kept  the  j^ublication  of  that 
name  out  of  a  city  directory  ;^^  and  the  circumstance 
that  defendant  removed  his  place  of  business  into  the 
same  locality  as  the  plaintiff,^-  or  is  dealing  in  other 
fraudulent  goods. *^ 

A  curious  instance  of  facts  regarded  as  indicia  of 
fraud  is  to  be  found  in  a  case  where  a  plaintiff  whose 
name,  originally  "Dr.  J.  W.  Trust,"  had  been  changed 
to  "Dr.  T.  F.  Gouraud,"  was  the  manufacturer  of  cos- 

453,    104    Fed.    Rep.    141,    145,   re-  Rep.   487,   488;    reversed  on  other 

versing  Fuller  v.  Huff,  99  Fed.  Rep.  grounds,  35  C.  C.  A.   237,  94  Fed. 

439;  Manitowoc  Malting  Co.  V.  Mil-  Rep.    667;    Fullwood    v.    Fullwood 

waukee  Malting  Co.,  119  Wis.  543,  (1),  W.  N.  1873,  p.  93;  W.  N.  1873, 

97  N.  W.  Rep.  389.  p.     185;     Seb.     42.       See     also     to 

77 — Drummond    v.     Tinsley,     52  same     effect,     Lee     v.     Haley,     21 

Mo.  App.  10;  Liggett  &  Myers  Tob.  L.    T.     N.     S.     546;      18     W.     R. 

Co.   v.   Finzer,   128   U.   S.   182-184;  181;   L.  R.  5  Ch.  D.  155;   39  L.  J. 

Weyman   v.    Soderberg,     108     Fed.  Ch.  284;  22  L.  T.  N.  S.  251;  18  W. 

Rep.  63-65  .  R.  242;   Viano  v.  Baccigalupo,  183 

78 — Drummond  V.  Tinsley,  sMpm.  Mass.    160,    67     N.    E.     Rep.     641; 

79 — Liggett  &  Myers  Tob.  Co.  v.  Church  v.  Kresner,  49  N.  Y.  Supp. 

Sam  Reid  Tob.  Co.,  104  Mo.  53.  742;    International   Society    v.    In- 

80 — Cave  v.  Myers,    Seton    (4th  ternational  Society,  59  N.  Y.  Supp. 

ed.),  238;   Seb.  304.  785. 

81 — Rodgers   v.    Rodgers,    31    L.  83 — Chas.   E.   Hires   Co.   v.   Con- 

T.  N.   S.  285;    Seb.   442.  sumers'  Co.,  100  Fed.  Rep.  809-812, 

82— Elgin    Nat.     Watch     Co.    v.  41   C.  C.  A.  71. 
Illinois   Watch   Case   Co.,    89   Fed. 


§  112]  INFRINGEMENT.  273 

metic  styled  ''Gouraud's  Oriental  Cream,"  and  the  de- 
fendants, his  sons,  who  had  retained  the  name  Trust, 
engaged  in  the  sale  of  a  cosmetic  which  they  named 
''Creme  Orientale,  by  Dr.  T.  F.  Gouraud's  Sons;"  the 
court  holding  from  these  facts  that  the  statement  of  the 
relationship,  though  tiiithful,  was  made  with  fraudulent 
intent.^*  The  use  on  defendant's  label  of  fictitious 
medals  of  award  has  been  treated  as  evidence  of  fraudu- 
lent intent**^ 

As  most  of  these  badges  of  fraud  have  been  referred 
to  by  the  courts  because  of  their  determining  influence 
in  cases  of  unfair  comi>etition,  we  will  consider  them  at 
length  in  that  connection.  Those  we  have  mentioned 
are  illustrative,  however,  of  the  class  of  facts  pertinent 
to  be  shown  in  cases  of  technical  trademark  infringe- 
ment, and  to  prove  which  is  important  for  the  reasons 
and  purjioses  above  referred  to. 

§112.  Infringing  by  refilling  trademarked  pack- 
ages.—There  is  no  doubt  that  one  who  furnishes  liquors 
(or  any  other  class  of  goods)  with  the  expressed  pur- 
pose that  the  goods  so  sold  are  to  be  used  in  refilling 
genuine  packages  whose  original  contents  have  been  re- 
moved will  be  dealt  with  as  an  infringer  and  enjoined  in 
equity.^^  The  refilling  of  genuine  packages  will  be 
restrained,**^  even  where  the  package,  a  bottle  bearing  a 
name  blown  in  the  glass,  is  used  for  a  similar  article, 
in  connection  with  a  label  not  resembling  that  borne  by 

84 — Gouraud    v.    Trust,    3    Hun,  257.  Compare  Hostetter  v.  Fries,  17 

627;  Seb.  460.  Fed.  Rep.  620,  in  which  defendants 

85 — Bolen   &  Byrne  Mfg.  Co.  v.  compounded  a  substance  to  be  used 

Jonasch,  60  N.  Y.  Supp.  555.  in  making  Hostetter's  Bitters,  and 

86 — Hostetter    Co.    v.     Bruegge-  sold  it  with  directions  for  so  using 

man-Rcinart  Distilling  Co.,  46  Fed.  it,  but  injunction  was  denied.  This 

Rpp.  188;   Cox,  Manual,  729;    Hos-  decision  is  entitled  to  no  weight, 
tetter   Co.   V.   Wm.    Schneider   Co.,         87 — Evans  v.  Von  Laer,  32  Fed. 

107   Fed.  Rep.   705;    Hostetter  Co.  Rep.  153;  Sawyer  Crystal  Blue  Co. 

V.   Conron,    111     Fed.    Rep.     737;  v.  Hubbard,  32  Fed.  Rep.  388;  Rose 

Samuel   Bros.   &   Co.   v.   Hostetter  v.  Henley,  cited  at  47  L.  J.  Ch.  577; 

Co.,  55  C.  C.  A.  Ill,  118  Fed.  Rep.  38  L.  T.  N.  S.  410;   Seb.  551;  Van 
18 


274  HOPKINS   ON   TR^U)EMARKS.  [§  113 

it  originally.*"^  Injunction  will  issue  even  where  the 
refilling  was  done  at  the  request  of  a  customer.^^  Judge 
Thayer  has  enjoined  a  defendant  from  offering  for  sale 
an  imitation  of  Hostetter's  Bitters  in  bulk  with  advice 
to  customers  to  refill  bottles  originally  containing  the 
genuine  compound,  with  the  spurious  article.*^^  In  this 
class  of  cases  "the  burden  is  strongly  upon  the  com- 
plainant to  prove  fraud  by  a  fair  preponderance  of  evi- 
dence. '  "'^ 

§113.  Infringement  by  refitting  and  reselling  worn 
trademarked  articles.— Akin  to  refilling  trademarked 
packages  are  cases  where,  a  part  of  a  trademarked  arti- 
cle having  worn  out  in  service,  the  parts  are  replaced 
and  the  article  sold  without  removing  the  trademark, 
and  where  this  replacement  of  parts  is  made  by  the 
owner  of  the  trademark,  identity  being  substantially  re- 
tained, no  fraud  is  effected.  Otherwise,  if  the  replace- 
ment is  made  by  a  stranger.*^-  The  Massachusetts  court 
has  refused  to  enjoin  the  manufacture  of  stove  castings 

Hoboken  v.  Mohns  &  Kaltenbach,  Reinert  Co.,  46  Fed.  Rep.  188;  Cox, 

112   Fed.    Rep.    528;    Pontefact   v.  Manual,  729;  cited  and  followed  in 

Isenberger,    106    Fed.     Rep.     499;  Hostetter  v.  Sommers,  84  Fed.  Rep. 

Hiram  Ricker  &  Sons  v.  Leigh,  77  333.     These  cases  overrule  Hostet- 

N.  Y.  Supp.  540;   Eckhart  v.  Con-  ter   v.    Fries,    17    Fed.     Rep.     620, 

solidated  Milling  Co.   72   111.  App.  where  Judge  Wallace  refused  to  en- 

70;   Scott  V.  Standard  Oil  Co.,  106  join  defendants  who  prepared  and 

Ala.  475.  sold  an  extract,  giving  instructions 

88 — Evans  v.  Von  Laer,  32  Fed.  to    their    customers    for    making 

Rep.  153;  Hostetter  v.  Anderson,  1  "Hostetter's  Bitters"  from  the  ex- 

V.  R.    (W.  A'B.  &  W.)    Eq.    7;     1  tract.     The  rule  stated  in  the  text 

Anst.  Jour.  4;    Seb.   652;    Rose  v.  is  followed  in  Myers  v.  Theller,  38 

Loftus,  47  L.  J.  Ch.  576;  38  L.  T.  Fed.  Rep.  607-609;  Hostetter  Co.  v. 

N.  S.  409;    Seb.   608.     See  contra,  Martinoni,  110  Fed.  Rep.  524. 
Welch   V.   Knott,   4   K.   &  J.    747;         91— Coxe,  J.,  in  Hostetter  Co.  v. 

4  Jur.  N.  S.  330;  Seb.  157.  Comerford,  97  Fed.  Rep.  585;  and 

89 — Barnett  v.   Leuchars,   13   L.  to   the   same   effect   see   Hostetter 

T.  N.  S.  495;   14  W.  R  166;    Seb.  Co.  v.  Bower,  74  Fed.  Rep.  235. 
253.  92 — General  Electric  Co.  v.    Re- 

90 — Hostetter     v.     Brueggeman-  New  Lamp  Co.,  128  Fed.  Rep.  154. 


§  114]  INFRINGEMENT.  275 

used  to  replace  woni  i)arts  of  a  plaintiff's  trademarked 
stoves.*^^ 

§  114.  Infringement  by  applying  a  manufacturer's 
trademark  to  goods  of  his  to  which  he  does  not  intend 
its  application.— In  Hennessy  v.  White,  the  defendants 
bottled  brandy,  purchased  in  casks  from  plaintiffs,  and 
apjjlied  to  such  bottling  a  label  which  was  a  colorable 
imitation  of  that  used  by  plaintiffs  to  designate  a  higher 
grade  of  brandy  sold  by  them  in  bottles  only.  The  court, 
by  Molesworth,  J.,  said:  '*!  think  a  new  feature  which 
has  not  been  present  in  any  other  case,  and  is,  there- 
fore, not  touched  by  the  language  of  the  other  cases,  is 
one  which  I  ought  to  act  upon  here;  that  is,  that 
the  makers  of  articles  of  different  ([ualities  are  entitled 
to  brand  their  best  article  in  a  particular  way  to  show 
the  superior  value  they  put  upon  it."  Stowell,  C.  J., 
in  the  same  case,  in  the  Victoria  supreme  court,  states 
the  i-ule  more  broadly:  ''If  a  brandy  different  from  that 
which  the  manufacturer  bottled  is  put  into  bottles  and 
sold  as  the  manufacturer's  bottled  brandy,  the  fact  that 
it  is  the  manufacturer's  bulk  brandy  does  not  make  the 
sale  less  an  imposition."'-*^  There  can  be  no  doubt  of 
the  right  of  the  manufacturer  or  selector  to  designate 
goods  of  a  certain  grade  bottled  or  packed  by  him  by 
a  distinctive  trademark,  and  that  no  one  purchasing 
goods  in  bulk  from  him  can  thereby  acquire  the  right 
to  pack  or  bottle  such  goods  under  the  trademark  of  the 
vendor  used  only  upon  his  packing  or  bottling.  Wliether 
the  bulk  goods  are  better  than  or  inferior  to  the  trade- 
marked  goods  is  utterly  immaterial  except  as  bearing 
upon  the  question  of  damages.^*^ 

93— Magee   Furnace   Co.    v.     Le  Seb.   651;    Krauss  v.   Jos.   R.   Pee- 

Barron,  127  Mass.  115.  bles'  Sons  Co.,  58  Fed.  Rep.  585. 

94— Hennessy  v.  White,  6  W.  W.  95— See  the  case  in  which  a  per- 

&  A'B.  Eq.  216-221;    Seb.  650.     See  son  purchasing  pens  from  a  manu- 

also  to   same   effect    Hennessy    v.  facturer    removed    the    labels    and 

Hogan,  6  W.  W.  &  A'B.  Eq.  225;  substituted  others  marked  with  a 


276  HOPKINS   ON   TR.U)EMARKS.  [§  115 

"It  is  manifest  that  the  sale  of  merchandise  in  bulk 
by  a  manufacturer  does  not  justify  the  vendee  in  using 
on  his  retail  packages  the  label  which  the  manufacturer 
uses  upon  the  same  merchandise  only  when  prepared  by 
himself  on  smaller  packages  for  the  retail  trade,""*'  but 
he  is  at  liberty  to  so  mark  them  as  to  truthfully  indi- 
cate the  manufacturer.^'''  Wliere  bulk  goods  were  sold 
without  limitation  as  to  the  manner  in  which  they  were 
to  be  re-sold,  the  effect  of  the  sale  was  held  to  be  "to 
invest  the  defendants  (vendees)  with  the  title  to  the 
article,  and  with  the  right  to  divide  it  into  small  pack- 
ages, as  (they)  might  see  fit,  and  sell  the  same  as 
originating  from  the  plaintiff,  according  to  the  fact."®* 

§115.  Substitution.— By  "substitution,"  as  used  here, 
is  meant  the  substitution  by  a  retail  merchant  of  goods 
other  than  those  called  for  by  a  purchaser.  In  its  nar- 
rower sense  it  is  confined  to  the  retail  merchant  who 
commits  the  offense.  In  its  broader  sense  it  includes  the 
manufacturer  of  the  substituted  goods  in  cases  where  he 
has  so  prepared  the  goods  as  to  make  the  substitution 
possible,  and  for  the  purpose  and  with  the  intent  that 
they  may  be  substituted.^  Of  such  manufacturers  the 
superior  court  of  New  York,  by  Barrett,  J.,  said:  "The 
law  of  trademarks  has  been  gradually  expanding  so  as 
to  meet  just  such  cases.  The  courts,  in  a  long  and  un- 
broken line  of  decisions,  have  endeavored  to  uphold  and 
enforce  commercial  m.orality,  and  have  afforded  their 
protection  to  honest  enterprise  and  skill.  "^     As  to  the 

numeral  indicating  another  grade  ment   Co.   v.   Frauenhar,  126  Fed. 

of  pen  made  by  the  same  manufac-  Rep.  228. 

turer.     Gillott  v.   Kettle,  3    Duer,  1 — Enoch   Morgan's  Sons  Co.  v. 

624;  Cox,  148.  Wendover,  43  Fed.  Rep.  420. 

96 — Taft,  J.,  in  Krauss  v.  Jos.  R.  2 — Morgan  Sons  Co.  v.   Troxell, 

Peebles'   Sons   Co.,   58    Fed.    Rep.  Cox,  Manual,  674.    The  New  York 

585-592.  court    of    appeals,     treating     this 

97 — Russia  Cement  Co.    v.    Kat-  case  as  purely  a  technical   trade- 

zenstein,  109  Fed.  Rep.  314.  mark  case,  reversed  it  in  89  N.  Y. 

98 — Wheeler,   J.,    in   Russia   Ce-  292.     If  there  had  been  considered 


§  116]  INFRINGEMENT.  277 

retailer  who  performs  the  actual  substitution,  there  is 
no  question  that  he  will  invariably  bo  enjoined  from  re- 
petitions of  his  offense.^ 

The  law  as  to  substitution  is  admirably  embraced  in 
the  language  of  Judge  Lacombe:  "A  court  of  equity  will 
not  allow  a  man  to  palm  off  his  goods  as  those  of  an- 
other, whether  his  misrepresentations  are  made  by  word 
of  mouth,  or  more  subtly,  by  simulating  the  collocations 
of  details  of  appearance  by  which  the  consuming  public 
has  come  to  recognize  the  product  of  his  competitor."* 

The  sale  of  an  imitation  article  without  misrepresenta- 
tion will  not  be  enjoined.  Where  the  article  was  a 
bitters  made  in  imitation  of  Hostetter's  Bitters,  but  the 
defendant  had  sold  the  goods  without  any  misrepresen- 
tation of  their  identity  and  without  suggesting  their 
adaptibility  for  substitution,  injunctive  relief  was  re- 
fused.^ 

False  oral  representations  that  defendant's  goods  are 
those  of  the  complainant  will  be  enjoined,*'  though  where 
the  defendant's  affidavits  contradict  those  of  the  plain- 
tiff concerning  such  representations  preliminary  injunc- 
tion will  be  denied,"  and  the  proof  must  be  clear  on 
final  hearing  to  entitle  plaintiff  to  the  relief  sought.^ 

§  116.  The  use  of  misleading  signs  and  circulars  en- 
joined.—The  use  of  misleading  business  signs  will  be 

by  the  appellate  court  the  doctrines  4 — Enterprise   Mfg.   Co.   v.   Lan- 

we  have  now  under  discussion,  the  ders,   Frary  &  Clark,  65   C.   C.   A. 

decision  of  the  lower  court  would  587,  131  Fed.  Rep.  40,  241;   affirm- 

have  been  affirmed.     Taendsticks-  ing  124  Fed.  Rep.   923. 

fabriks  Aktiebolaget  Vulcan  v.  My-  5 — Hostetter  Co.  v.  Van  Vorst,  62 

ers,   11   N.   Y.   Sup.    663;    Avery  v.  Fed.  Rep.  600. 

Meikle,   81   Ky.   75;    Cox,   Manual,  6 — Weber    Medical    Tea    Co.    v. 

686.  and  cases  cited  elsewhere  in  Kirchstein,  101  Fed.  Rep.  580. 

this  chapter.  7 — Lavanburg  v.  Pfeiffer,  52  N. 

3 — Saxlehner  v.   Eisner   &  Men-  Y.  Supp.  801. 

delson    Co.,    88    Fed.    Rep.     61-70;  8— Lavanburg  v.  Pfeiffer,  66  N. 

Munro  v.  Smith,  13  N.  Y.  Sup.  708;  Y.  Supp.  39. 
N.  K.  Fairbanks  Co.  v.  Dunn,  126 
Fed.  Rep.  227. 


278  HOPKINS   ON   TRADEMARKS.  [§  116 

restrained  in  equity,  whether  or  not  such  signs  are  fixed 
before  a  particular  place  of  business,  or  are  distributed 
through  the  trade.  The  general  rule  has  been  thus 
stated  by  the  Chancellor  of  Upper  Canada  in  a  case 
involving  the  use  of  signs  bearing  words  "The  Gol- 
den Lion"  used  upon  a  diy  goods  establishment: 
''Where  it  is  clear  to  the  Court  that  the  defendant  him- 
self intended  an  advantage  by  the  use  of  a  particular 
sign  or  mark  in  use  by  another,  and  believes  he  has 
obtained  it,  or,  in  other  words,  that  the  defendant  him- 
self thought  the  use  of  it  was  calculated  to  advertise 
him  at  the  expense  of  the  plaintiff,  and  this  was  his 
object  in  using  it,  and  where  such  has  been  the  effect 
of  the  user,  T  think  the  Court  should  say  to  him  'Remove 
that  sign;  its  use  by  you  may,  as  you  intend,  damage 
the  plaintiff'.  It  cannot  be  necessary  or  valuable  to  you 
for  any  other  purpose.  You  have  your  choice  of  many 
signs  which,  as  a  mere  attraction,  or  to  give  your  store 
a  marked  designation,  must  answer  a  fair  business  pur- 
pose equally  well. '  "  ^ 

It  will  be  noted  that  in  the  foregoing  case  the  decep- 
tion employed  consisted  in  duplicating  the  tradename  in 
which  the  plaintiff's  business  was  conducted.  The  same 
principle  has  been  applied  by  a  New  York  Court  in 
granting  equitable  protection  to  a  flag  design  used  in 
newspaper  advertising  by  a  real  estate  auctioneer.  The 
advertising  device  which  was  employed  was  the  repre- 
sentation of  a  flag  having  an  ornamentation  of  stars, 
fancifully  arranged  along  its  upper  and  lower  edges. 
The  defendant  duplicated  this  device  in  his  newspaper 
advertising  matter,  and  there  was  testimony  tending 
to  show  that  persons  had  actually  been  deceived  into  be- 
lieving that  the  defendant's  advertising  was  that  of  the 
plaintiff.i^ 

9— Walker  v.  Alley,  13  Grant  Up.  10— Johnson  v.  Hitchcock,  3  N. 
Can.  Ch.  366.  Y.  Supp.  680. 


§  116]  INFRINGEMENT.  279 

In  the  latter  case,  therefore,  the  signs  were  not  used 
upon  a  place  of  business.  In  a  Missouri  case,  equitable 
relief  was  granted  to  a  brewing  company  in  the  use  of 
white  muslin  signs  of  peculiar  size  and  lettering  which 
had  been  distributed  both  by  the  plaintiff  and  the  de- 
fendant brewing  companies  to  the  retail  trade  through- 
out the  city  of  St.  Louis.  The  decree  in  the  lower  court 
was  for  the  plaintiff.  The  St.  Louis  Court  of  Appeals, 
in  reversing  the  decree  directing  the  injunction  for  the 
plaintiff,  said:  **The  correct  decision  of  the  case  at  bar 
depends  upon  the  finding  of  two  propositions:  was  the 
imitation  of  the  plaintiff's  signs  by  defendant  merely 
the  result  of  an  accident;  or  was  it  the  result  of  a  pre- 
conceived design  to  mislead  the  jiublic  into  the  belief 
that  the  plaintiff's  beer  was  being  sold  at  the  defend- 
ant's place  of  business?  Was  the  imitation  of  the  sign 
close  enough  to  bring  about  such  a  deception?"  ^^ 

The  more  usual  cases  are  those  of  signs  bearing  sim- 
ilar tradenames  exhibited  on  competing  stores  in  the 
same  vicinity,  in  which  the  sign  of  the  later  comer  is 
enjoined  if  calculated  to  mislead  the  public  into  the  false 
belief  that  they  are  patronizing  the  older  establish- 
ment.'^ 

Circulars  containing  false  statements,— The  usual 
remedy  by  injunction  against  unfair  competition  will 
be  granted  where  a  competitor  issues  circulars  calculated 
to  deceive  customers  into  the  false  belief  that  the  goods 
of  the  parties  are  identical.^^  The  relief  has  been  granted 
where  the  defendant's  circulars  were  sent  to  the  plain- 
tiff's customers  and  recited  that  defendant  had  there- 

11 — American  Brewing  Co.  v.  St.  Caton  College  Co.,    (Minn.)    92  N. 

Louis  Brewing  Co.  47  Mo.  App.  14,  W.  Rep.  958. 
20.  13— Brown  v.  Braunstein.  83  N. 

12— Miskell  v.  Prokop,  58  Nebr.  Y.  Supp.  1096:  Van  Stan's  Stratena 

628,   79   N.   W.   Rep.    552;     Nolan  Co.    v.   Van    Stan,— Pa.— .    58    Atl. 

Bros.  Shoe  Co.  v.  Nolan,  131  Calif.  Rep.  1064.  For  a  form  of  injunction 

271,  63   Pac.   Rep.   480;    Ricard  v.  in  such  a  case  see  Bunker  v.  Ken- 

na.  Price  &  Stewart  883. 


280  HOPKINS  ON  TRADEMARKS.  [§  117 

tofore  distributed  tlie  goods,  and  that  the  defendant's 
manufacturing  was  done  in  part  at  the  plaintiff's  street 
address.^  ^ 

Similarly,  the  use  of  display  signs  calculated  to  de- 
ceive the  public  into  patronizing  one  competitor  in  the 
belief  that  they  are  patronizing  the  other,  will  be  en- 
joined,^^  as  will  the  publication  of  circulars  calculated 
to  induce  the  false  belief  that  a  book  published  by  com- 
plainant was  fraudulent.^ ^ 

§  117.  Infringement  by  a  dissimilar  word  or  mark.— 
The  general  rule  is  that  there  may  be  infringement  even 
in  the  absence  of  exact  similarity  between  the  marks.^^ 

In  1866  Lord  Cranworth  said  in  a  leading  case:  "If 
the  goods  of  a  manufacturer  have,  from  the  mark  or 
device  he  has  used,  become  known  in  the  market  by 
a  particular  name,  I  think  that  the  adoption  by  a  rival 
trader  of  any  mark  which  will  cause  his  goods  to  bear 
the  same  name  in  the  market  may  be  as  much  a  violation 
of  the  rights  of  that  rival  as  the  actual  copy  of  his 
device."  ^^    This  dictum  was  elicited  in  a  case  where  the 

14— American    Novelty    &    Mfg.  18— Seixo  v.  Provezende,  supra; 

Co.    V.    Manufacturing     Electrical  12  Jur.  N.  S.  215;    14  L.  T.  N.  S. 

Novelty  Co.,  73  N.  Y.  Supp.  755.  314;  14  W.  R.  357;  Seb.  256. 

15 — cady  v.  Schultz,  19  R.  I.  193,  The  doctrine  of  the  leading  case 

32  Atl.  Rep.  915;   Duke  v.  Cleaver,  applies    to    all    cases    where    the 

(Tex.)   46  S.  W.  Rep.  1128.  goods   of  a   particular    dealer    or 

16 — Halstead    v.     Houston,    111  manufacturer  have  become  known 

Fed.  Rep.  376.  by  a  name  derived  from  his  trade- 

17 — Liggett  &  Myer  Tobacco  Co.  mark.        Anglo-Swiss      Condensed 

V.  Hynes,  20  Fed.  Rep.  883.  "What  Milk  Co.  v.  Metcalf,  L.  R.  31  Ch. 

degree  of  resemblance  is  necessary  D.  454;  55  L.  J.  Ch.  463;  34  W.  R. 

is,   from   the   nature  of  things,   a  345;   3  R.  P.  C.  28;   Cartmell,  48; 

matter    incapable    of    definition    a  Re  Speer's  Trademark,  4  R.  P.  C. 

priori.     All   that  courts  of  justice  521;  55  L.  T.  N.  S.  880;   Cartmell, 

can   do   is   to   say  that  no   trader  317;  Re  Baschiera's  Trademark,  33 

can  adopt  a  trademark  so  resemb-  S.  J.  469;  Re  La  Societe  Anonyme 

ling  that  of  a  rival  as  that  ordin-  des  Verreries  de  I'Estoile,  10  R.  P. 

ary    purchasers,   purchasing    with  C.  436;   L.  R.   (1894)   1  Ch.  D.  61; 

ordinary  caution,  are  likely  to  be  11    R.    P.    C.     142;     Wilkinson    v. 

misled."    Lord  Cranworth  in  Seixo  Griffith,  8  R.  P.  C.  370;   Cartmell, 

y.  Provezende,  L.  R.  1  Ch.  D.  192.  344;  Morgan  Envelope  Co.  v.  Wal- 


§  117]  INFRINGEMENT.  281 

plaintiff  sold  wine  in  casks  stamix^d  with  the  device  of 
a  crown  and  an  eagle,  and  the  initials  "B.  S."  on  the 
head  of  tlie  cask,  and  a  crown,  the  word  "Seixo"  and 
a  date  at  the  bung  hole,  from  which  the  wine  had  ac- 
quired the  name  "Crown  Seixo;"  while  the  defendants 
sold  wine  in  casks  stamped  on  the  head  and  at  the  bung 
hole  with  the  device  of  a  crown,  the  initials  "C.  B.," 
the  words  "Seixo  de  Cima,"  and  figures  "1861."  The 
defendants  were  enjoined  notwithstanding  the  fact  that 
the  marks  were  not  similar. 

Under  this  rule,  plaintiffs  who  made  a  certain  beer  to 
which  they  applied  the  device  of  a  bull-dog's  head  were 
granted  an  injunction  against  the  use  by  competing 
dealers  of  a  label  similar  in  shape  to  the  plaintiffs'  and 
bearing  a  terrier's  head.  There  was  no  resemblance 
between  the  labels  beyond  the  similarity  in  shape,  but 
the  plaintiffs'  beer  had  come  to  be  known  as  "Dog's 
Head  Beer,"  and  the  use  of  a  dog's  head  upon  similar 
merchandise  by  the  defendants  was  manifestly  for  the 
purpose  of  passing  off  their  beer  as  being  the  plain- 
tiffs'.^»  It  is  self-evident  that  a  trademark  may  be  in- 
fringed by  a  mark  entirely  different,  but  suggesting  to 
customers  and  the  public  the  same  word  or  idea.  Thus 
when  an  English  house  had  used  in  India  a  trademark 
for  yam  which  had  led  the  natives  to  call  for  it  as  "  Bhe 
Hathi"  (meaning  "Two  Elephant")  yarn,  a  competing 
firm  was  enjoined  from  exporting  yarn  to  India  under 
a  trademark  of  which  the  principal  feature  was  the  rep- 
resentation of  two  elephants.20  On  the  same  reasoning 
the  word  "Sportsman's"  accompanied  by  a  picture  of 
two  mounted  huntsmen,  used  as  a  trademark  for  cherry 
brandy,  was  held  to  be  infringed  by  the  picture  of  a 

ton,  82  Fed.  Rep.  469;   81  Off.  Gaz.  19— Read  v.  Richardson,  4.j  U  T. 

1615;  Johnson  &  Johnson  v.  Bauer  N.  S.  54;  Cox.  Manual,  No.  69S. 

&  Black,  27  C.  C.  A.  374,  82  Fed.  20— Orr-Ewing  &  Co.  v.  Johnston 

Rep.  662;    Kann  v.  Diamond  Steel  &  Co.,  40  L.  T.  N.  S.  307;  Seb.  646. 
Co.,  89  Fed.  Rep.  706. 


282  HOPKINS   ON   TRADEMARKS.  [§  117 

limiteman  standing  beside  his  horse,  and  the  words 
"Huntsman's  Cherry  Brandy,"  where  the  proof  aliunde 
showed  that  the  plaintiffs'  liquor  had  become  known 
to  the  public  as  "The  Hunter's  Cherry  Brandy.""^ 

Judge  Sanborn  has  well  said  that  "every  suit  of  this 
character  is  founded  on  the  fact  that  the  action,  or  the 
proposed  action,  of  the  defendant  has  deceived,  or  is  cal- 
culated to  deceive,  ordinary  purchasers  buying  with 
usual  care,  so  that  they  have  purchased,  or  will  prob- 
ably purchase,  the  goods  of  the  defendant  under  the  mis- 
taken belief  that  they  are  those  of  the  complainant. ' '  -^ 
So  that  each  case  must  turn  upon  the  peculiar  facts  in- 
volved. Thus  where  a  plaintiff  had  for  some  time  man- 
ufactured tennis  racquets  uniformly  stamped  at  a  par- 
ticular place  upon  the  handle  with  the  words  "The 
Demon,"  and  the  defendant  began  to  manufacture  and 
sell  racquets  of  a  similar  design,  stamped,  in  the  cor- 
responding place  upon  the  handle,  with  the  word  "De- 
motic," the  use  of  the  word  "Demotic"  was  restrained.^^ 
So  the  word  "Curative,"  applied  to  soap,  has  been  held 
to  infringe  the  word  "Cliticura,"  similarly  applied  j^* 
and  a  red  Greek  cross  has  been  held  to  be  infringed  by 
a  maltese  cross  with  a  red  center,  each  being  used  as  a 
mark   upon   medicinal   plasters.^^ 

21 — Re  Barker's  Trademark,   53  trademark,  the  word  "Ancross"  for 

L.  T.  N.  S.  23;  Cartmell,  72.  Simi-  umbrellas  was  refused  registration, 

lar  cases  are  Barlow  v.  Johnson,  7  Re  Thewlis  &  Blakey's  Trademark, 

R.  P.  C.  395;   Cartmell,  73;   Upper  10  R.  P.  C.  369. 

Assam  Tea  Co.  v.  Herbert,  7  R.  P.  24 — Potter     Drug     &     Chemical 

C.  183;  Cartmell,  333;  Re  Worth-  Corp.  v.  Miller,  75  Fed.  Rep.  656. 
ington's  Trademark,  L.  R.  14  Ch.  25 — Johnson  &  Johnson  v.  Bauer 

D.  8;  49  L.  J.  Ch.  646;  42  L.  T.  N.  &  Black,  27  C.  C.  A.  374, 
S.  563;  28  W.  R.  747;  Cartmell,  82  Fed.  Rep.  662;  reversing 
351;  Jerome  v.  Johnson,  59  N.  Y.  same  case,  79  Fed.  Rep.  954. 
Supp.  859.  In  his  opinion  Judge  Jenkins  said: 

22 — Kann  v.  Diamond  Steel  Co.,  "It   sufficiently   appeared     by    the 

89  Fed.  Rep.  706.  testimony  that  the  goods  of  the  ap- 

23 — Slazenger  v    Feltham,   6   R.  pellant   have   come   to   be   known, 

P.   C.   531;    Cartmell,    310.       Thus  and  are  offered,  ordered  and  sold, 

where  an  anchor  had   been   regis-  as   'Red    Cross   Plasters;'   and    we 

tered  in  England  as  an  umbrella  cannot  but  think  that  the  maltese 


§117] 


INFRINGEMENT. 


283 


Other  instances  in  which  the  courts  have  declared  a 
word  or  words  used  as  a  trademark  to  be  infringed  by 
a  different  word  or  words  will  be  found  instructive. 
For  the  convenience  of  the  reader  they  are  tabulated  in 
alphabetical  order. 


The  Trademark. 
''Abacus." 
''Alba." 
"Anvil." 
"Apollinaris." 
"Black  Diamond." 
"Bovilene." 
"Burgess." 

"Canadian    Club    Whis- 
key." 
"Cascarets." 
"Cascarets." 
"Cashmere  Bouquet." 
"Celluloid." 
' '  Chartreuse. ' ' 
"Chatterbox." 

cross  adopted  by  the  appellee,  In 
so  far  as  it  contains  a  red  circle, 
has  a  tendency  to  promote  confu- 
sion, and  will  interfere  with  the 
legitimate  trade  of  the  appellant. 
.  .  .  The  red  cross  speaks  to  the 
eye,  and  the  article  being  known 
by  that  designation  speaks  also  to 
the  ear  by  that  name." 

26— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.,  118  Fed.  Rep.  187. 

27— Ibid. 

28— Ibid. 

29 — Apollinaris  Co.  v.  Herrfeldt, 
4  P.  R.  478;  Apollinaris  Brunnen 
V.  Somborn.  14  Blatchf.  380;  Fed. 
Case  No.  496. 

30— Pike  Mfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed.  Rep.  896. 


Held  to  be  infringed  by 
"  Arcade.  "=« 
"Antique."-^ 
"  Anchor. "-« 
"Apollinis."2» 
"Diamond  Gem."^^ 
"Bovina."'^^ 
"Burgiss."^^ 
' '  Canadian    Rye    "Whis- 
key. "^^ 
"Cascara."  ^"^ 
"Castorets."35 
' '  Violets  of  Cashmere. '  '^*^ 
"Cellonite."^'^ 
"  Chasseurs.  "^^ 
"Chatterbook."39 

31 — Lockwood  v.  Bostwick,  2 
Daly,  521. 

32 — Burgess  v.  Hills,  26  Beavan. 
244. 

33— Walker  v.  Mlkolas,  79  Fed. 
Rep.  955. 

34 — Sterling  Remedy  Co.  v. 
Gorey,  110  Fed.  Rep.  372. 

35 — Sterling  Remedy  Co.  v.  Sper- 
mine Remedy  Co.  50  C.  C.  A.  657, 
112  Fed.  Rep.  1000. 

36— Colgate  v.  Adams,  88  Fed. 
Rep.  899. 

37— Celluloid  Mfg.  Co.  v.  Cellon- 
ite  Mfg.  Co.  32  Fed.  Rep.  94. 

38— A.  Bauer  Co.  v.  Order  ol 
Carthusian  Monks.  56  C.  C.  A.  484 
120  Fed.  Rep.  78.  80. 

39— Estes  V.  Leslie,  29  Fed.  Rep. 
91. 


284 


HOPKINS   ON   TRADEMARKS. 


[§117 


The  Trademark. 
'^Clark's  O.  N.  T." 
' '  Cocoaine. ' ' 

*  *  Cocoatina. ' ' 

*  *  Coe 's     Superphosphate 

of  Lime." 
''Corona." 
''Cottolene." 
''Cupola." 
"Cyclops  Machine 

Works." 
"Doric." 
"Derby." 
"Duplex." 
"Economy." 
"Egj^ptian  Deities." 
"El  Destino." 

"Electro-Silicon." 

"Excelsior." 

"Flor  de  Margaretta." 

40— Clark  Thread  Co.  v.  Armi- 
tage,  21  C.  C.  A.  178,  74  Fed.  Rep. 
936. 

41_Burnett  v.  Phalon,  9  Bos.192. 

42 — Schweitzer  v.  Atkins,  37  L. 
J.  Ch.  847. 

43_Coe  V.  Bradley,  Fed.  Case 
No.    2941,   9   Off.   Gaz.   541. 

44— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.,  118  Fed.  Rep.  187. 

45_N.  K.  Fairbank  Co.  v.  Cen- 
tral Lard  Co.,   64  Fed.   Rep.   133. 

46— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.,  supra. 

47— Hainque  v.  Cyclops  Iron 
Works,  136  Calif.  35,  68  Pac.  Rep. 
1014. 


Held  to  he  infringed  hy 

"Clark's  N.  E.  W."*° 

"Cocoine."^^ 
"Cocaotine."^2 

"Andrew    Coe's    Super- 
phosphate of  Lime."*^ 
"  Corinth.  "^^ 
"Cottoleo."^^ 
"  Composite.  "•*« 
"Cyclops  Iron  Works."*' 

"Delos."^8 
"Derwent."4» 
"  Deluxe.  "^<> 
' '  Economic. ' '" 
"Egyptian  Amasis."'*^ 
"El    Divino"    and    "El 

Destinacion. '  "^^ 
"Electric-Silicon."'^* 
"Excellent."-'^ 
"Margarita."^'® 

48— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.  118  Fed.  Rep.  187. 

49— Derby  Dry  Plate  Co.  v.  Pol- 
lard, 2  Times  L.  R.  276. 

50— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.,  supra. 

51— Ibid. 

52 — Anargyros  v.  Egyptian  Am- 
asis  Cigarette  Co.  66  N.  Y.  Supp. 
626. 

53— Pinto  V.  Trott,  8  P.  R.  173. 

54 — Electro-Silicon  Co.  v.  Trask, 
59  How.  Pr.  189,  followed  \n  Same 
V.  Levy,  59  How.  Pr.  469. 

55— Volger  v.  Force,  71  N.  Y.  S. 
209. 

56 — Benedictus  v.  Sullivan,  12  P. 
R.  25. 


§117 


INFRINGEMENT. 


285 


The  Trademark. 
''Genuine  Durham  Smok- 
ing   Tobacco, ' '    with 
the  picture  of  a  bull. 

"German." 

"Gennan  Household 
Dyes." 

**Germea." 

"Gold  Dust." 

"Golden  Crown." 

"Gothic." 

"Guinness." 

"Home." 

"Home  Brand." 

"Honeymoon." 

"Hostetter   Bitters." 

"Hostetter  «&  Smith." 

*  *  Humphrey 's       Homeo- 
pathic  Specifics. ' ' 

"Junket   Tablets." 
"Ky's  Criterion." 

57 — Blackwell  v.  Armistead,  3 
Hughes,  163;  Fed.  Case  No.  1474. 

58— Walter  Baker  &  Co.  v.  Baker, 
77  Fed.  Rep.  181. 

59 — Oppermann  v.  Waterman,  94 
V/is.  583;  69  N.  W.  Rep.  569. 

60 — Sparry  v.  Percival  Milling 
Co.,  81  Cal.  252. 

61— N.  K.  "Fairbank  Co.  v.  Luck- 
el,  King  &  Cake  Soap  Co.,  42  C.  C. 
A.  376,  102  Fed.  Rep.  327;  revers- 
ing s.  c,  88  Fed.  Rep.  694. 

62 — Parlett  v.  Guggenheimer,  67 
Md.  542;   10  Atl.  Rep.  81. 

63— Keuffel  v.  Esser  Co.  v.  H.  S. 
Crocker  Co.,  118  Fed.  Rep.  187. 

64 — Guinness  v.  Heap,  Seb.  617. 


Held  to  he  infringed  by 
"The   Durham   Smoking 
Tobacco, ' '    with    the 
picture    of    a    bull's 
head."" 
"Germania."^^ 
"Excellent  German 

Household  Dyes."^» 
"Gei-m."*"^ 
"Gold  Drop."«^ 
"Golden  Chain. "«2 
"  Ionic.  "^^^ 
"Genuine.""'* 
"Home  Delight. "«5 
"Home  Comf ort. "^'^ 
' '  Honeycomb. '  '"^ 
"Host-Style   Bitters. "«« 
"Holsteter  &  Smyte."«» 
' '  Reeves '    Imported   Ho- 
m  e  o  p  a  t  h  i  c    Speci- 
fics. "^« 
"Junket  Capsules."'^ 
"Ky's  Credential. ""^2 

65 — New  Home  Sewing  Machine 
Co.  V.  Bloomingdale,  59  Fed.  Rep. 
284. 

66 — Griggs,  Cooper  &  Co.  v.  Erie 
Preserving  Co.,  131  Fed.  Rep.  359. 

67 — Kentucky  Distilleries  & 
Warehouse  Co.  v.  Wathen,  110  Fed. 
Rep.   641-644. 

68— Hostetter  v.  Becker,  73  Fed. 
Rep.    297. 

69— Hostetter  v.  Vowinkle,  1  Dill. 
329,  Fed.  Case  No.   6714. 

70 — Humphreys'  Specific  Med. 
Co.  V.  Wenz,  14  Fed.  Rep.  250-253. 

71 — Hansen  v.  Siegel-Cooper  Co., 
(2).    106    Fed.   Rep.    691. 

72 — Kentucky       Distilleries       £ 


286 


HOPKINS   ON   TRADEMARKS. 


[§117 


The  Trademark. 
''Lacto-Peptine." 
'  *  Landlords '     Protective 

Bureau." 
* '  Leopoldshall. ' ' 
"Lightning  Hay 

Knives. ' ' 
''Limetta." 
*' Little  Shop." 
**Maizena." 
* '  Manufacturers '     Outlet 

Co." 
"Maryland  Club  Rye." 

"Mechanics'  Store." 
"Miller's    Chicken   Cock 

AVliiskey. ' ' 
' '  Moma  ja. ' ' 
' '  Morse 's      Compound 

Syrup  of  Yellow  Dock 

Root." 


Held  to  be  infringed  by 
' '  Lactopepsine. '  '^^ 
"Landlords'     Protective 

Department. '  ''^ 
"Leopoldsalt."^^ 
"Lightning  Pattern  Hay 

Knives.  "^*^ 
"Limette.""^^ 
"Little  Antique  Shop."" 
"Maizharina."^^ 
"Taunton   Outlet  Co."^^ 

"Maryland  Jockey  Club 

Rye.  "81 
"Mechanical  Store. "»2 
"Miller's      Game     Cock 

Rye.  "83 

"Mojava."84 

"Dr.  Morse's  Improved 
Yellow  Dock  and  Sar- 
saparilla  Com- 
pound. '  '8^^ 


Warehouse  Co.  v.  Wathen,  110  Fed. 
Rep.  641-644. 

73 — Carnrick  v.  Morson,  L.  J.  N. 
of  C.    (1877),  p.   71. 

74 — Koebel  v.  Chicago  Land- 
lord's Protective  Bureau,  210  Ills. 
176,  71  N.  E.  Rep.  362;  affirming 
Chicago  Landlords'  Protective  Bur- 
eau V.  Koebel,  112  111.  App.  21. 

75— Radde  v.  Norman,  L.  R.  14 
Eq.  348. 

76— Hiram  Holt  Co.  v.  Wads- 
worth,  41  Fed.  Rep.  34. 

77 — Drewry  &  Son  v.  Wood,  127 
Fed.  Rep.  887. 

78— Crawford  v.  Lans,  60  N.  Y. 
Supp.  387. 


79— Glen  Cove  Mfg.  Co.  v.  Lu- 
deling,  22  Fed.  Rep.  823;  23 
Blatchf.  46. 

80 — Samuels  v.  Spitzer,  177  Mass. 
226,  58  N.  E.  Rep.  693. 

81— Cahn  v.  Gottschalk,  2  N.  Y. 
Supp.  13. 

82 — Weinstock,  Lubin  &  Co.  v. 
Marks,  109  Cal.  529. 

83— G.  G.  White  Co.  v.  Miller, 
50  Fed.  Rep.  277. 

84 — American  Grocery  Co.  v. 
Sloan,  68  Fed.  Rep.  539. 

85 — Alexander  v.  Morse,  14  R.  L 
153. 


§117] 


INFRINGEMENT. 


287 


I'he  Trademark. 
*  *  Mottled  German  Soap. ' ' 
with  circle,  moon  and 
stars. 

* '  Moxie. ' ' 

"Moxie  Nerve  Food." 

**  Nickel-In." 

'*  Normal." 

''Old   Crow." 

''Old  Mill  Soap." 

"Pancoast." 

"Paragon." 

' '  Pepto-Mangan. ' ' 

"Portland." 

"Pride." 

"Pride  of  Rome." 

"Roberts'     Parabola 

Gold  -  Burnished 

Sharps." 
"Rogers." 

86— Proctor  v.  McBride,  Fed. 
Case  No.  11441. 

1 — Moxie  Nerve  Food  Co.  v. 
Beach,  33  Fed.  Rep.  248. 

2 — Moxie  Nerve  Food  Co.  v. 
Baumbach,  32  Fed.  Rep.  205. 

3— Schendle  v.  Silver,  70  N.  Y. 
fciup.  Ct.  330,  18  N.  Y.  Supp.  1. 

4— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.,  118  Fed.  Rep.  187. 

5 — W.  A.  Gaines  &  Co.  v.  Leslie, 
54  N.  Y.  Supp.  421;  25  Misc.  Rep. 
20. 

6— Swift  &  Co.  v.  Brenner,  125 
Fed.  Rep.  826. 

7 — Janney  v.  Pan-Coast  Ventila- 
tor &  Mfg.  Co.,  128  Fed.  Rep.  121. 


Held  to  he  infringed  by 

"S.  W.  McBride's  Ger- 
man Mottled  Soap," 
with  a  crescent  and 
star.***^ 

"Noxie."! 

"Standard  Nerve 
Food.  "2 

"Nickel-Saved.  "3 

"Nonnandy."-* 

"Wliite  Crow."= 

"Old  Stone  Mill  Soap."« 

"Pan-coast."'^ 

"  Pebble. "« 

"Pepto-Manganate  of 
Iron  and  Cascara."^ 

"Famous   Portland. "^« 

"Pride  of  Syracuse. "^^ 

"Pride  of  the  Home."^^ 

"William  Clark  &  Sons' 
Parabola  Gold-Burn- 
ished  Sharps.  "^^ 

"RoDgers."^^ 

8— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.,  118  Fed.  Rep.  187. 

9 — M.  J.  Breitenbach  Co.  v. 
Spangenberg,  131  Fed.  Rep.  160. 

10 — Van  Horn  v.  Coogan,  52  N.  J. 
Eq.  380;    28  Atl.  Rep.   788. 

11— Hier  v.  Abrahams,  82  N.  Y. 
519. 

12 — Ft.  Stanwix  Canning  Co.  v. 
Wm.  McKinley  Canning  Co.,  63  N. 
Y.  Supp.  704. 

13— Roberts  v.  Sheldon,  8  Biss. 
398;    Fed.  Case  No.  11916. 

14 — International  Silver  Co.  v. 
Rodgers  Bros.  Cutlery  Co.,  136  Fed. 
Rep.    1019,   1021. 


288 


HOPKINS   ON   TRADEMARKS. 


[§117 


The  Trademark. 
''Koy  Watch-Case  Co." 

'^Sanitas." 
''Sapolio." 
''Sapolio." 
''Sawyer's  Crystal  Blue 

and  Safety  Box." 
''Shawknit." 
'  *  Shrewsbury,     Marshall 

&       Co.       Patent 

Thread." 
''Simplex." 
"Six  Little  Tailors." 
"Sorosis." 
"Southern  Company,  St. 

Louis. ' ' 
"Star." 
"Stark." 
' '  Steinway. ' ' 
"Stephens." 
"Stuart's  Dyspepsia 

Tablets." 


Held  to  he  infringed  by 

' '  Camm-Roy  Watch-Case 

Co."^^ 

"  Condisanitas.  "^^ 

"Saphia."^^ 
"Sapho."i8 

"Sawin's  Soluble  Blue 
and  Pepper  Box."^* 

"  Seamless.  "-0 

"Schrewsbury  -  Marchal 
Patent  Thread,  "^i 

' '  Simplicity. '  '^^ 

"Six  Big  Tailors. "23 

"Sartoris."2* 

"Southwestern,  St. 
Louis.  "^^ 

"Lone  Star."2« 

"Star.  "27 

"Steinberg.  "28 

"Steel  Pens. "29 

"Dr.  Stewart's  Dyspep- 
sia Tablets.  "30 


15 — Roy  Watch-Case  Co.  v. 
Camm-Roy  Watch  Case  Co.,  59  N. 
Y.  Supp.  979. 

16— Sanitas  Co.  v.  Condy,  4  P.  R. 
195. 

17 — Enoch  Morgan's  Sons  Co.  v. 
Schwachofer,  5  Abb.  Pr.  N.  C.  265. 

18 — Enoch  Morgan's  Sons  Co.  v. 
Whittier-Coburn  Co.,  118  Fed.  Rep., 
657. 

19 — Sawyer  v.  Kellogg,  7  Fed. 
Rep.   720,  9  Fed.  Rep.  601. 

20 — Shaw  Stocking  Co.  v.  Mack, 
12  Fed.  Rep.  707;  21  Blatchf.  1. 

21— Marshall  v.  Ross,  L.  R.  8 
Eq.  651. 

22— Keuffel  &  Esser  Co.  v.  H.  S. 


Crocker  Co.,  118  Fed.  Rep.  187. 

23 — Mossier  v.  Jacobs,  65  111. 
App.  571. 

24— Little  V.  Kellam,  100  Fed. 
Rep.  353. 

25 — Southern  White  Lead  Co.  v. 
Cary,  25  Fed.  Rep.  125. 

26 — Hutchinson  v.  Covert,  51 
Fed.  Rep.   832,  61  Off.  Gaz.  1017. 

27— Gardner  v.  Bailey,  Seb.  365; 
Fed.  Case  No.  5221. 

28 — Steinway  v.  Henshaw,  5  P. 
R.  77. 

29— Stephens  v.  Peel,  16  L.  T.  N. 
S.   145. 

30— Stuart  v.  F.  G.  Stewart  Co., 
91  Fed.  Rep.  243,  33  C.  C.  A.  280. 


§117] 


INFRINGEMENT. 


289 


The  Trademark. 
''Sunlight." 
''Swan." 
"Tonge's." 
"Trafford." 
"Uneeda." 
"Universal." 
*'Vitae-Ore." 
"Wamsutta." 
' '  Warren. ' ' 
' '  Welcome. ' ' 
"Willoughby  Lake.'^ 
"Yusea." 
"55." 


Held  to  he  infringed  by 
"American    Sunlight. "^^ 
"Black  Swan. "32 
"Tung's."-*^ 
"Stafford.  "3^ 
"Iwanta."^^ 
"  University.  "3« 
"Vitalizing  Ore."" 
"Wamyesta."''8 
"  Warranted.  ""^^ 
"AVelcome   A.    Smith.  "^^ 
"Willoughby   Ridge."" 
"U-C-A."^2' 
"35."" 


It  follows  that  a  word  may  infringe  a  symbol,  or  vice 
versa.  Thus  the  figure  of  Columbia  is  an  infringement 
of  the  word  ' '  Columbia, ' '  previously  applied  to  the  same 
class  of  merchandise.^^  But  the  use  by  a  plaintiff  of  a 
conventional  diamond-shaped  design  has  been  held  not 
to  confer  a  trademark  right  in  the  word  "diamond," 
Judge  Adams  remarking:  "If  the  complainant's  goods 
had  ever  been  known  in  the  trade  as  'diamond  steel,'  or 


31— Lever   Bros.   v.   Pasfield,   88 
Fed.  Rep.  484. 

32 — Ex  parte  Caire,  15  Off.  Gaz. 
248. 

33— Tonge  v.  Ward,  21  L.  T.  N. 
S.  480. 

34— Smith   v.  Carron  Co.,  13  P. 
R.  108. 

35 — National  Biscuit  Co.  v.  Bak- 
er, 95  Fed.  Rep.  135. 

36— Keuffel  &  Esser  Co.  v.  H.  S. 
Crocker  Co.,  118  Fed.  Rep.  187. 

37— Noel  V.  Ellis,  89   Fed.   Rep. 
978. 

38— Wamsutta  Mills  v.  Allen.  12 
Phila.  535. 

39— Frost  V.  Rindskopf,  42  Fed. 
Rep.  408. 
19 


40 — Lever  Bros.  Ltd.,  Boston 
Works  V.  Smith,  112  Fed.  Rep.  998. 

41— Pike  Mfg.  Co.  v.  Cleveland 
Stone  Co.,  35  Fed.  Rep.  896. 

42— Welsbach  Light  Co.  v. 
Adam,  107  Fed.  Rep.  463. 

43 — Collins  v.  Reynolds  Card 
Mfg.  Co.,  7  Abb.  N.  C.  17,  Price  & 
Steuart,  262. 

44 — Morgan  Envelope  Co.  v. 
Walton,  82  Fed.  Rep.  469;  81  Off. 
Gaz.  1615.  In  this  connection,  see 
Kann  v.  Diamond  Steel  Co..  89  Fed. 
Rep.  706,  and  Re  Thewlis  & 
Blakey's  Trademark,  10  R.  P.  C. 
369. 


290  HOPKINS   ON   TRADEM.\JIKS.  [§  117 

generally  as  'diamond'  goods,  it  would  undoubtedly  be 
protected  in  the  use  of  the  word  'diamond'  as  a  trade- 
name, even  though  such  word  nowhere  appeared  in  con- 
nection with  the  symbol  of  a  conventional  diamond  form- 
ing its  trademark.  Its  use  by  a  competitor,  either  as  its 
corporate  name  or  tradename  for  its  product,  under  such 
circumstances  would  undoubtedly  tend  to  deceive,  and 
fall  within  the  condemnation  of  the  cases  ^f  complain- 
ant's counsel.  See,  especially,  Johnson  v.  Bauer,  82  Fed. 
Kep.  662."  ^-"^ 

The  addition  of  other  symbols,  words  or  initials  to  the 
trademark  of  another  will  not  operate  to  avoid  a  charge 
of  infringement.  "No  one  who  has  counterfeited  a  legit- 
imate trademark  and  applied  the  spurious  symbol  in 
competition  with  the  genuine  can  avoid  the  charge  of 
infringement  by  showing  that  the  false  mark  has  in  prac- 
tice been  so  accompanied,  on  labels,  capsules  or  other- 
wise, by  tradenames,  designations,  descriptions  or  other 
accessories,  not  forming  part  of  it,  as  to  render  it  un- 
likely that  the  public  has  been  deceived.  Such  a  show- 
ing, while  it  may  affect  the  nature  or  measure  of  the 
relief  to  be  granted,  cannot  defeat  a  suit  for  infringe- 
ment."^^ 

In  the  absence  of  proof  of  any  deception  of  the  public, 
the  courts  have  not  been  inclined  to  declare  a  different 
mark  an  infringement  unless  the  similarity  was  close. 
Thus  it  has  been  held  that  the  word  "Pudding"  does 
not  infringe  the  word  "Puddine;"^^  that  the  word 
"Bacocuro"  does  not  infringe  the  word  "No-to-bac;""*^ 
that  the  mark  "B.  &  S."  does  not  infringe  the  mark 

45— Pittsburg  Crushed  Steel  Co.  47 — Clotworthy    v.     Schepp,    42 

V.  Diamond  Steel  Co.,  85  Fed.  Rep,  Fed.    Rep.    62. 

637-642.  48 — Sterling  Remedy  Co.  v.  Eu- 

46— Bradford,  J.,  in  Bass,  Ratcliff  reka  Chem.   &   Mfg.   Co.,   80   Fed. 

&   Gretton    (Ltd.)    v.    Feigenspan,  Rep.  105,  25  C.  C.  A.  314. 
96  Fed.  Rep.  206-212. 


§  117J  INFRINGEMENT.  291 

*'S.  B.;"^»  that  the  mark  ''Filofloss,"  applied  to  silk, 
is  a  valid  trademark  notwithstanding  the  prior  use  of 
the  mark  "Filoselle"  applied  to  silk  of  a  different  char- 
acter;°"  that  the  mark  "Beeshore  One-Night  Cough 
Cure"  does  not  infringe  the  mark  "One  Xight  Cure;"'^' 
that  the  mark  "Elastic  Tolu"  does  not  infringe  the 
mark  "Sappota  Tolu;"^^  that  the  mark  "Star"  and  an 
uncolored  tin  star  is  not  infringed  by  "Starlight"  and 
a  red  paixir  star;'^^  that  "Everyday  Soap"  was  not  so 
clearly  infringed  by  " Everj'body 's  Soap"  as  to  warrant 
a  preliminaiy  injunction;"'*  that  the  mark  "Cuticura" 
is  not  infringed  by  the  mark  "Cuticle;"-"'^  that  the  mark 
"Grape-nuts"  is  not  infringed  by  the  mark  "Grain- 
Hearts;"^^  that  the  mark  "Yama-Mai"  is  not  infringed 
by  "Ma-mie;"^^  that  "Weber"  applied  to  pianos,  is 
not  infringed  by  ' '  Webster ; "  ^^  that  ' '  Hurricane ' '  is 
not  infringed  by  " Tempest ;"  ■•'•'  that  "B.  T.  Babbitt's 
Trademark  Best  Soap"  is  not  infringed  by  "P.  T.  But- 
ler's Trademark  Best  Soap;"^^  that  the  name  "Social 
Register"  applied  to  a  directoiy  is  not  infringed  by  the 
words  "Newport  Social  Index  ;"*^^  that  the  name 
"Vichy"  was  not  infringed  by  " Lithia- Vichy, "  there 
being  numerous   artificial  vichy  waters  upon  the  mar- 


49— Burt  V.  Smith,  71  Fed.  Rep.  Pasfield   Soap   Co.    (1),    102    Fed. 

161-163.  Rep.  490;   Same  v.  Same   (2),  106 

50 — Rawlinson     v.     Brainard     &  Fed.  Rep.  914,  46  C.  C.  A.  40. 

Armstrong  Co.,  59  N.  Y.  Supp.  880;  56— Postum   Cereal    Co.   Ltd.     v. 

28  Misc.  Rep.  287.  American    Health    Food    Co.,     109 

51— Kohler  Mfg.  Co.  v.  Beeshore,  Fed.  Rep.  898. 

(2),  59  Fed.  Rep.  572-576,  8  C.  C.  57— Boessneck  v.  Iselin,  82  N.  Y. 

A.  215.  Supp.  164. 

52 — Adams    v.    Heisel,    31    Fed.  58 — Foster  v.  Webster  Piano  Co., 

Rep.  279.  13  N.  Y.  Supp.  338. 

53 — Liggett  &  Myers  Tobacco  Co.  59 — Hurricane     Patent    Lantern 

V.  Finzer,  128  U.  S.  182.  Co.  v.  Miller,  56  How.  Pr.  234. 

54— Proctor    &    Gamble    Co.    v.  60— Babbitt  v.   Brown,    68   Hun 

Globe   Refining  Co.,   92   Fed.   Rep.  515. 

357;   34  C.  C.  A.  405.  61— Social  Reg.  Assn.  v.  Murphy, 

55— Potter  D.  &  Chem.  Corp.  v.  128  Fed.  Rep.  116. 


292  HOPKINS   ON    TRADEMARKS.  [§  118 

ket;®-  that  the  mark  "  Rough-on-Eats "  was  not  in- 
fringed by  ''Rough  on  Skeeters,"  the  goods  not  being 
in  competition,*^^  that  the  book  title  "Farthest  North, 
Nansen,"  was  not  infringed  by  "The  Fram  'Expedi- 
tion.' "^^  While  the  word  "Muffler"  is  closely  similar 
to  "Mufflet,"  and  the  latter  is  a  valid  trademark  for 
neck-scarfs,  the  use  of  the  former  cannot  be  enjoined  be- 
cause it  is  aptly  descriptive  of  the  article  to  which  it  is 
applied.*'^ 

It  is  important  to  note  in  this  connection  the  expres- 
sion of  Lord  Cranworth,  that  "It  would  be  a  mistake  to 
suppose  that  the  resemblance  must  be  such  as  would  de- 
ceive persons  who  should  see  the  two  marks  placed  side 
by  side.  The  rule  so  restricted  would  be  of  no  practical 
use."*'*' 

And  another  rule  is  that  a  defendant  cannot  evade 
the  charge  of  infringement  by  "showing  that  the  device 
or  inscription  upon  the  imitated  mark  is  ambiguous,  and 
capable  of  being  understood  by  different  persons  in  dif- 
ferent ways."  ^"^ 

§  118.  Patent  office  rulings  on  similarity  of  alleged  con- 
flicting marks. — The  decisions  of  the  several  commission- 
ers of  patents  as  to  similarity  and  dissimilarity  of 
marks  alleged  to  be  conflicting  or  identical  are  fre- 
quently instructive  and  valuable  as  illustrations.  In 
the  language  of  Allen,  Commissioner,  "The  question  of 
anticipation  by  a  prior  registered  mark  may  be  tested 
by  the  question  of  infringement.  The  doctrine  of  the 
patent  law  that  that  which  would  infringe  if  later  in  date 
will  anticipate  if  earlier  is  applicable  to  questions  of 

62 — La  Republique  Francaise  v.  65 — Hygienic  Fleeced  Underwear 

Schultz,  (4)   115  Fed.  Rep.  196.  Co.  v.  Way,  C.  C.  A.,  137  Fed.  Rep. 

63— Wells  V.  Ceylon  Perfume  Co.,  592,   595. 

105  Fed.  Rep.  621.  66 — Seixo   v.   Provezende,   L.   R. 

64— Harper  v.  Lare,  93  Fed.  Rep.  1  Ch.  D.  192. 

989;    Harper  &  Bros.   v.   Lare,   43  67— Lord  Watson  in  Singer  Mfg. 

C.  C.  A.  182,  103  Fed.  Rep.  203.  Co.  v.  Loog   (3),  8  App.  Cas.  39. 


§  no; 


INFRINGEMENT. 


293 


trademark,  for  it  involves  only  the  question  of  substan- 
tial identity.'"'* 

In  the  following  cases  registration  was  refused  upon 
a  prior-registered  mark  because  of  the  similarity  ad- 
judged by  the  Commissioner  to  exist  between  them: 


The  Applicant's  mark 
''Colonial." 
''Dysj^epticide." 
' '  Liveroid. ' ' 
''Maple  Leaf." 
"Nitro-Hunter." 
"Pepko." 
"Satin  Skin." 
"Sagafoam." 
' '  Telegra  phone. ' ' 
"Velva." 


Rejected  on 

"Colonial  Dame."«9 

"Dyspepticure."'^'^ 

"Liveraid."^! 
"Silver  Leaf. ""^2 

"Nitro."^3 

"  Pep-Kola.  ""^^ 

"Satinette."^^ 

"Sea  Foam."^« 

' '  Telegraphophone. '  '^^ 

"Velvet.  "^8 


§  119.  Miscellaneous  matters  relating  to  infringe- 
ment.— In  the  cases  of  infringement  it  is  manifest  that  the 
policy  of  the  law  is  clear,  and  that  difficulty  in  determin- 
ing questions  of  infringement  arises  only  out  of  the 
facts. 

It  was  asked  in  the  English  House  of  Lords,  "How 
can  observations  of  judges  upon  other  and  quite  dif- 
ferent facts  bear  upon  the  present  case,  in  which  the 
only  question  is  what  is  the  result  of  the  evidence  ?" '^^ 


68 — Ex  parte  Keystone  Chamois 
Co.,  101   Off.   Gaz.   3109. 

69— Allen  B.  Wrisley  Co.  v. 
Buck,  95   Off.  Gaz.   2483. 

70— Ex  parte  Foley  &  Co.,  87  Off. 
Gaz.  1957. 

71 — Ex  parte  Dr.  Harter  Med.  Co., 
106  Off.  Gaz.  1779. 

72— Ex  parte  Vogel  &  Son,  99  Off. 
Gaz.  2321. 

7Z—Ex  parte  W.  B.  Belknap  & 
Co.,  105  Off.  Gaz.  745. 


Ti—Ex  parte  Sutton,  108  Off. 
Gaz.  291. 

75— Wood  V.  Hinchman,  110  Off. 
Gaz.  600. 

76 — Ex  parte  Sodafoam  Baking 
Powder  Co.,   96   Off.   Gaz.   1239. 

77— Ex  parte  Hutchins,  100  Off. 
Gaz.  1330. 

7S—EX  parte  Willard  Chem.  Co., 
107   Off.   Gaz.    1972. 

79 — Lord  Watson  in  Johnson  v. 
Orr-Ewing,  H.  L.  7  App.  Cas.  219. 


294  HOPKINS   ON    TRADEMARKS.  [§  119 

Analogies  will,  however,  frequently  be  found  in  the  ad- 
judicated cases  which  may  assist  in  classifying  the  char- 
acter of  infringement  under  consideration. 

Infringements  which  display  the  name  or  initials  of 
the  defendant  are  none  the  less  infringments  if  any  sub- 
stantial portion  of  the  mark  is  taken  from  the  plaintiff's 
mark.^*^  This  principle  has  been  applied  to  a  case  where 
the  defendant  had  washed  plaintiff's  labels  off  his  bot- 
tles, leaving  only  the  marks  blown  or  moulded  in  the 
glass,  and  had  pasted  his  own  labels  upon  the  bottles,^^ 
although  in  similar  cases,  where  the  name  of  the  defend- 
ant was  conspicuously  displayed  on  the  new  label,  in- 
junction was  refused.^-  But  the  fact  that  the  defend- 
ant does  display  his  name  upon  his  goods  is  always  to 
be  considered  as  a  circumstance  in  his  favor.^^ 

Infringement  applied  to  goods  of  equal  quality.— li  is 
settled  that  the  fact  that  the  defendant's  goods  are  equal 
in  quality  to  the  plaintiff's  is  no  defense  to  the  action 
of  infringement.  As  said  by  Judge  McLean:  "To  en- 
title a  comjjlainant  to  protection  against  a  false  repre- 
sentation it  is  not  essential  that  the  article  should  be 
inferior  in  quality.  "^^  And  in  an  English  case  involving 

80— Sawyer  Crystal  Blue  Co.  v.  T.   N.   S.    409;    Seb.   608;    Rose   v. 

Hubbard,    32    Fed.    Rep.    388;    An-  Henly,  Seb.  551. 
heuser-Busch  Brewing  Association         82 — Welch   v.  Knott,   4   K.   &  J. 

V.   Clarke,  26  Fed.  Rep.  410;    Gar-  747;    Barret    v.    Gomm,    74    L.    T. 

rett  V.  T.  H.  Garrett  &  Co.,  24  C.  C.  (Journal)    388. 

A.  173,  78  Fed.  Rep.  472;  Anheuser-         83— "This   is   one  of  the   impor- 

Busch  Brewing  Association  v.  Piza,  tant  means  of  identification."    Sev- 

24    Fed.    Rep.    149;     Hostetter    v.  erens,  J.,  in  Proctor  &  Gamble  Co. 

Adams,  10  Fed.  Rep.  838;  Pepper  v.  v.  Globe  Refining  Co.,  34  C.  C.  A. 

Labrot,    8    Fed.     Rep.     29;     Shaw  405,  92  Fed.  Rep.  357-362.  And  see 

Stocking  Co.  v.  Mack,  12  Fed.  Rep.  Kann  v.  Diamond  Steel  Co.,  89  Fed. 

707;    McCann  v.   Anthony,   21   Mo.  Rep.  706;  P.  Lorillard  Co.  v.  Peper, 

App.  83;    Bass,  Ratcliff  &  Gretton  86  Fed.  Rep.  956-959;  Blackwell  v. 

(Ltd.)  V.  Feigenspan,  96  Fed.  Rep.  Crabb,  36  L.  J.  Ch.  504;   Beard  v. 

206.  Turner,  13  L.  T.  N.  S.  746. 

81 — Hostetter  v.  Anderson,  1  W.         84— Coffeen    v.    Brunton    (2),    5 

W.  &  A'B.  Eq.  7;    Seb.   652;    Rose  McLean,   256. 
V.  Loftus,  47  L.  J.  Ch.  576;   38  L. 


§  120]  INFRINGEMENT.  295 


the  manuraclure  of  metallic  hones,  Lord  Denman  in- 
structed the  jury  that  ''even  if  the  defendant's  hones 
were  not  inferior,  the  plaintiff  was  entitled  to  some 
damages,  inasmuch  as  his  right  had  been  invaded  by 
the  fraudulent  act  of  the  defendant."**^  It  may  be  re- 
garded as  settled  that  it  is  immaterial,  in  the  language 
of  Judge  Morris,  whether  the  defendant's  goods  "Ije 
better  or  worse  in  (luality. "  **" 

§  120.  The  use  of  letters  and  numerals.— The  principle 
that  there  can  1)0  Inidemark  rights  in  letters  or  numerals 
cannot  be  considered  as  finally  settled.  Gillott  v.  Ester- 
hrook,^~  in  which  the  defendant  was  enjoined  from  using 
the  numerals  ''303,"  was  for  a  time  regarded  as  up- 
holding their  use  as  a  trademark,  but  the  case  is  known 
and  recognized  as  a  case  of  unfair  competition.**^  The 
leading  English  case,  Ainsivorth  v.  Wahnslei/,  is  very 
similar  to  Gillott  v.  Esterhrooh,  supra,  in  that  while 
the  imitation  of  a  series  of  numbers  was  considered  as 
one  of  the  elements  justifying  injunction,  Vice-Chan- 
cellor  Wood  carefully  distinguished  them  as  not  being 
a  technical  trademark."*"  There  is  no  case,  however,  in 
England  in  which  the  courts  have  recognized  "a  mere 
numeral  or  combination  of  numerals,  standing  alone,  as 
sufficiently  arbitrary  and  distinctive  to  constitute  a  trade- 
mark,"^*'  and  the  United  States  Circuit  of  Appeals  for 
the  Sixth  circuit  has  flatly  held  that  a  "bare  numeral" 
cannot  be  trademark.^^ 

85— Blofield    v.    Payne,    4    B.    &  87—47  Barb.  455;  Cox,  340. 

Ad.  410;   Seb.  50.     See  also  Taylor  88 — Browne  on  Trademarkks  (2d 

V.    Carpenter    (2),    2  W.   &   M.    1;  ed.),  sec.  228. 

Cox,  32;  Taylor  v.  Carpenter   (3),  89— Ainsworth   v.    Walmsley,   L. 

2    Sandf.    Ch.    603;      Edelsten     v.  R.  1  Eq.   518-527. 

Edelsten,  1  DeG.  J.  &  S.  185;  Seb.  90— Sebaetiaji     on     Trademarks 

213.  (4th  ed.).  p.   79. 

86 — Sawyer  v.  Horn.  1  Fed.  Rep.  91 — Dennlson       Mfg.       Co.       v. 

24-38.     To  the  same  effect  see  Cut-  Scharff  Tag,   Label  &   Box  Co.,   C. 

ter  V.   Gudebrod    Bros.   Co.,   55   N.  C.  A.     ,  135  Fed.  Rep.  625,  628. 
Y.  Supp.  298. 


296  HOPKINS   ON   TRADEMARKS.  [§  120 

Of  course  numerals  may  form  a  part  of  a  trademark, 
in  combination  or  collocation  with  words,  figures  or  de- 
signs, and  many  cases  in  which  their  imitation  has  been 
restrained  turned  upon  this  point  ;'-•-  they  will  also  be 
protected  when  used  in  an  arbitrary  and  distinctive  man- 
ner which  conveys  no  idea  of  number,  although  they 
would  jjrobably  not  be  so  used  except  in  collocation  with 
designs  or  words.^^  In  one  case  it  was  held  that  a  com- 
l)lainant  was  entitled  to  the  exclusive  use  of  a  trade- 
mark consisting  of  the  figures  i/^,  only  in  the  form,  size, 
color  and  style  in  which  it  had  been  registered  and 
used."^ 

The  strongest  case  holding  that  numerals  alone  may 
form  a  valid  technical  trademark  is  Shaiu  Stocking  Co. 
V.  Mack,^^  in  which  Judge  Coxe  ably  reviews  the  deci- 
sions and  arg-ues  that  the  rejection  of  numerals  as  trade- 
mark was  invariably  because  of  their  use  indicating 
quality  rather  than  origin  or  ownership;  but  he  finally 
bases  the  reason  of  his  decree  of  injunction  flatly  upon 
the  defendant's  fraudulent  competition. 

The  practical  difficulty  in  the  way  of  constructing  a 
trademark  from  numerals  alone  is  that  the  defendant 
could  always  find  a  multiplicity  of  excuses  for  selecting 
the  same  numerals,  and  the  cases  indicate  that  the 
courts  grant  ample  protection  to  their  use  as  against 
their  fraudulent  imitation.^^ 

92— Boardman   v.   Meriden  Brit-  properly  a  case  of  unfair  competi- 

annia  Co.,  35  Conn.  402;  Lawrence  tion. 

Mfg.  Co.  V.  Lowell,  129  Mass.  325;  94— Kinney  v.  Allen,    1  Hughes, 

Humphreys'    Specific    Med.    Co.    v.  106;  Seb.  557;  Fed.  Case  No.  7826. 

Wenz,   14   Fed.   Rep.   250;    Carver  95—12  Fed.  Rep.  707.     See  also 

V.  Pinto  Leite,   L.  R.   7  Ch.  App.  to  the  same  effect  Smith  &  Davis 

90;    Robinson  v.   Finlay,   L.   R.   9  Mfg.  Co.  v.  Smith,  89  Fed.  Rep.  486. 

Ch.  D.  487;  Broadhurst  v.  Barlow,  96— Gillott    v.    Kettle,    3    Duer 

W.    N.    1872,   p.     212;     Carver    v.  624;  American  Solid  Leather  But- 

Bowker,   Seb.   581;    Ralli  v.  Flem-  ton  Co.  v.  Anthony,  15  R.  L  338; 

ing,  Ind.  L.  R.  3  Calc.  417.  Collins  v.  Reynolds  Card  Mfg.  Co., 

93— Kinney    v.    Basch,    16    Am.  7    Abb.    N.    C.    17;    India    Rubber 

Law   Reg.   N.    S.   596;    Seb.    542—  Comb  Co.    v.    Jewelry    Co.,  45  N. 


§  12Uj  INFRINGEMENT.  297 

Even  where  numerals  were  originally  indicative  of 
origin  and  ownership,  if  they  have  come  to  be  used  to 
indicate  quality,  any  one  having  the  right  to  make  or 
sell  the  article  in  connection  wherewith  such  numerals 
are  so  used  may  designate  the  article  by  the  numerals/*^ 

In  regard  to  letters,  standing  alone  or  in  initial  com- 
binations, the  English  courts  have  from  an  early  period 
treated  them  as  trademarks,°^  although  it  appears  that 
under  the  English  act  of  1875,  38  and  39  Vict.,  c.  91, 
Vice-Chancellor  Hall  has  held  a  single  letter  cannot  be 
registered  as  a  trademark.^*^ 

The  use  of  a  single  letter  would  appear  to  be  at  least 
unsafe,  although  it  might  in  the  United  States  be  re- 
garded as  a  trademark;  and  Judge  Bradford  in  a  recent 
opinion  suggests  that  a  single  letter  or  figure  may  be 
**so  peculiar  and  unusual  in  form  or  ornamentation"  as 
to  be  a  valid  trademark.^ 

Combinations  of  letters,  used  as  initials,  have  been 
frequently  approved  as  trademarks  in  the  American 
decisions,-  and  in  the  case  of  Amoskeag  Mfg.  Co.  v. 
Trainer,^   in   the   federal    supreme   court,   the   decision, 

Y.    Sup.   Ct.    258;    Sohl   v.    Geisen-  353;    Cartier   v.    Carlile,    31    Beav. 

dorf,  1  Wills.    (Ind.)    60;    Hazard  292;     Cartier     v.    Westhead.    Seb. 

V.   Caswell,  57   How.  Pr.   1;    Glen  199;    Cartier   v.    May,     Seb.     200; 

&  Hall  Mfg.  Co.  V.  Hall,  61  N.  Y.  Moet  v.  Clybonn.  Seb.  533;  Moet  v. 

226;    19   Am.  Rep.   278;    Seb.   443;  Pickering.  L.  R.  8  Ch.  D.  372;   Ex 

Humphreys'  Homoepathic  Medicine  parte  Young,   Seb.   537;     Ransome 

Co.  V.  Hilton,  60  Fed.  Rep.  756.  v.  Graham,  51  L.  J.  Ch.  897;   Bon- 

97— Smith   &   Davis  Mfg.  Co.  v.  dier  v.  Depatie,  3  Dorion,  233;   Re 

Smith,  89   Fed.   Rep.   486.  Brook,  26  W.  R.  791. 

98— Ransome  v.  Bentall,  3  L.  J.  99— Re  Mitchell,  L.  R.  7  Ch.  D. 

Ch.    161;    Motley   v.    Downman,    3  36;    46    L.   J.    Ch.    876;    26    W.    R. 

My.  &  Cr.  1;   Millington  v.  Fox,  3  326;  Cartmell,  226. 

My.     &     Cr.     338;     Crawshay     v.  1 — Dennison   Mfg.  Co.  v.  Thom- 

Thompson,  4  M.  &  G.  357;   Kina-  as  Mfg.  Co.,  94  Fed.  Rep.  651-658. 

han  V.  Bolton,  15  Ir.  Ch.  75;   Hop-  2 — Geron    v.    Gartner,     47     Fed. 

kins  V.  Hitchcock,  14  C.  B.  N.  S.  Rep.    467:    Frank    v.    Sleeper,    150 

65;    Hall  v.  Barrows,  4   DeG.  J.  &  Mass.  583. 

S.    150;    Barrows   v.    Pelsall.    Seh.  3—101  U.  S.  51. 
530;   Re  Barrows,  L.  R.  5  Ch.   D. 


298  HOPKINS   ON   TRADEMARKS.  [§  120 

which  held  the  letters  '*A  C  A"  were  not'  a  valid  trade- 
mark, was  based  upon  the  theory  that  those  letters  as 
used  by  the  complainant  were  indicative  of  quality,  and  I 

not  of  origin  or  ownership,  as  Judge  Coxe  has  pointed 
out.^  There  can  scarcely  be  a  doubt  that  both  numerals 
and  letters  of  the  alphabet  may  sometimes  be  technical 
trademarks,  and  the  objection  to  their  use  in  that  ca- 
pacity has  been  well  stated  by  Judge  Colt  in  the  su- 
preme court  of  Massachusetts  to  be  "the  difficulty  of 
giving  to  bare  numbers  the  effect  of  indicating  origin  or 
ownership,  and  of  showing  that  the  numbers  used  were 
originally  designed  for  that  purpose.  "^^'  And  the  same 
practical  suggestion  was  offered  by  the  supreme  court 
of  Connecticut  in  these  words:  "It  may  be  difficult  to 
give  to  bare  numbers  the  effect  of  indicating  origin  or 
ownership,  and  it  may  be  still  more  difficult  to  show 
that  they  were  originally  designed  for  that  purpose;  but 
if  it  be  once  shown  that  that  was  the  original  design, 
and  that  they  have  had  that  effect,  it  may  not  be  easy 
to  assign  a  reason  why  they  should  not  receive  the  same 
protection,  as  trademarks,  as  any  other  symbol  or  de- 
vice."^ j 

A  review  of  the  cases  indicates  that  the  use  of  nu- 
merals or  letters  has  been  restrained  sometimes  on  the 
theory  that  they  were  technical  trademarks,  but  never 
where  they  were  merely  used  to  indicate  quality;'^  and 
where  injunction  has  issued,  the  facts  show  that  the 
infringing  figures  or  letters  were  used  in  fraudulent 
competition.^ 

4 — Shaw   stocking  Co.  v.   Mack,  er.   101   U.    S.    51;    Stevens   Linen 

12   Fed.   Rep.   707.  Works  v.  William  &  John  Don  & 

5 — Lawrence  Mfg.  Co.  v.  Lowell,  Co.,    121    Fed.    Rep.   171,   affirmed, 

129    Mass.    325;    Price   &   Steuart,  — C.  C.  A.—,  127  Fed.  Rep.  950. 

418.  8 — Ransome  v.  Bentall,   3  L.  J. 

6— Boardman   v.    Meriden    Brit-  Ch.  N.  S.  161;   Gillott  v.  Kettle.  3 

annia  Co.,  35  Conn.  402;  Cox,  490.  Duer,    624;    Ainsworth    v.    Walms- 

7— Re  Eagl^  Pencil  Co.,  10  Off.  ley,    L.    R.    1    Eq.    518;    Gillott   v. 

Gaz.  981;   Amoskeag  Co.  v.  Train-  Esterbrook,    47     Barb.     455;     Cox, 


§  121]  INFRINGEMENT.  299 

In  this  connection  it  is  well  to  note  that  -'there  can  be 
no  doubt,  and  indeed  it  is  not  disi)uted,  that  two  letters 
may  constitute  a  trademark.'"-*  So  the  American  courts 
have  unifonnly  held  that  monograms  or  groups  of  two 
or  more  letters  not  indicative  of  quality  constitute  valid 
trademarks;  thus  we  find  that  the  following  marks  have 
been  held  valid:  *'A.  G."  applied  to  cigars  and 
coffee  ;^^  *'B.  B.  B."  applied  to  a  medicine  ;^i  "B.  B. 
H."  applied  to  iron;'-  *'S.  B."  applied  to  cougli- 
drops;'-"'  ''G.  E."  applied  to  electric  lamps;^^  ''G.  F." 
applied  to  velvet  ribbon ;'•'  ''0.  F.  C."  applied  to 
whiskey ;'«  ''A.  C.  A."  applied  to  ticking;'^  ''J.  H.  AV." 
applied  to  boots.^^  And  we  find  that  similar  groups  of 
letters  and  monograms  have  been  treated  as  valid  by 
the  English  decisions.^ ^ 

§  121.  The  judicial  test  of  infringement.— It  may  be 
said,  generally,  that  the  courts  will  apply  to  the  facts, 
in  the  class  of  cases  that  we  are  considering,  any  and  all 
tests  which  are  necessary  to  determine  whether  or  not 
the  competition  established  by  the  defendant  is  fraudu- 
lent.   In  delivering  the  opinion  of  the  federal  supreme 

340;    48    N.    Y.    374;    8    Am.    Rep.  16— Geo.  T.  Stagg  Co.  v.  Taylor, 

553;   Broadhurst  v.  Barlow,  W.  N.  95  Ky.  651,  27  S.  W.  Rep.  247. 

1872,  p.  212;    Seb.  411;    Kinney  v.  17 — Amoskeag  Mfg.  Co.  v.  Train- 

Basch,  Seb.  542;   Avery  v,  Meikle,  er,   101   U.   S.   51    (dissent  of   Mr. 

81  Ky.   75.  Justice  Clifford).     To  the  same  ef- 

9 — Kinahan  v.  Bolton,  15  Jr.  Ch.  feet   see    Burton    v.     Stratton,    12 

75.  Fed.  Rep.  696;    Smith  v.  Imus,  32 

10— Godillot    V.    American     Gro-  Alb.  L.  J.   455;    Frank  v.   Sleeper, 

eery  Co.,  71  Fed.  Rep.  873.  150  Mass.  583,  23  N.  E.  Rep.  213. 

11— Foster   v.    Blood    Balm    Co.,  18— Walker   v.   Reid,   Fed.    Case 

77  Ga.  216;  3  S.  E.  Rep.  284.  No.  17084. 

12— Hall  V.  Barrows,  4   DeG.  J.  19— Hopkins  v.  Hitchcock,  14  C. 

&  S.  150.  B.   N.    S.    65;    Paul   v.    Barrows,   4 

13— Burt  V.  Smith,  71  Fed.  Rep.  DeG.  J.  &  S.  150;   Re  Barrows.  L. 

161.  R.   5   Ch.   D.  353;    Cartier  v.   Car- 

14— General   Electric   Co.  v.  Re-  lile,  31  Beavan,  292;  Moet  v.  Pick- 
new  Lamp  Co.,  128  Fed.  Rep.  154.  ering,  L.  R.  8  Ch.  D.  372;  Frankau 

15 — Giron   v.   Gartner,    47    Fed.  v.  Pope,  11  Cape    of    Good    Hope, 

Rep.  467.  209. 


300  HOPKINS   ON   TR.VDEMARKS.  [§  121 

court  in  Coats  v.  Merrick  Thread  Co.,  Mr.  Justice  Brown 
observed:  ''The  differences  are  less  conspicuous  than 
the  general  resemblance  between  the  two.  At  the  same 
time,  they  are  such  as  could  not  fail  to  impress  them- 
selves upon  a  jjerson  who  examined  them  with  a  view 
to  ascertain  who  was  the  real  manufacturer  of  the 
thread. "-"  And  in  all  cases  the  court  will  insi^ect  not 
only  the  differences  but  the  resemblances,  as  both  must 
be  considered  in  ascertaining  whether  the  competition 
between  the  parties  is  fair  or  fraudulent.  As  said  by 
Judge  Severens:  ''It  has  been  said  that  it  is  the  re- 
semblances that  should  be  looked  at,  rather  than  the 
differences.  But  the  existence  of  the  latter  negatives 
the  former,  and  it  is  necessary  to  take  both  into  view, 
in  order  to  get  a  correct  picture  of  the  whole. ' '  ^i 

Of  course  the  defendant  cannot  avail  himself  of  dis- 
similarities which  become  apparent  only  upon  compari- 
son of  the  plaintiff's  and  defendant's  packages  or 
marks.  This  is  because  purchasers  do  not  have  the  op- 
portunity of  making  comparisons.  "A  specific  article 
of  approved  excellence  comes  to  be  known  by  certain 
catchwords  easily  retained  in  memory,  or  by  a  certain 
IDicture  which  the  eye  readily  recognizes.  The  pur- 
chaser is  required  only  to  use  that  care  which  persons 
ordinarily  exercise  under  like  circumstances.  He  is  not 
bound  to  study  or  reflect.  He  acts  upon  the  moment. 
He  is  without  the  opportunity  of  comparison.  It  is 
only  when  the  difference  is  so  gross  that  no  sensible 
man  acting  on  the  instant  would  be  deceived,  that  it 
can  be  said  that  the  purchaser  ought  not  to  be  protected 
from  imposition.  Indeed,  some  cases  have  gone  to  the 
length  of  declaring  that  the  purchaser  has  a  right  to  be 
careless,^-  and  that  his  want  of  caution  in  inspecting 
brands  of  goods  with  which  he  supposes  himself  to  be 

20— Coats     V.     Merrick     Thread     Globe   Refining  Co.,   Q2   Fed.   Rep. 
Co.,  149  U.  S.  562.  357-362,  34  C.  C.  A.  405. 

21 — Proctor    &    Gamble    Co.    v.         22 — It  has  been  held  on  circuit 


?  121]  INFRINGEMENT.  301 

familiar  ought  not  to  be  allowed  to  uphold  a  simula- 
tion of  a  brand  that  is  designed  to  work  fraud  upon  the 
public.  However  that  may  be,  the  imitation  need  only 
be  slight  if  it  attaches  to  what  is  most  salient;  for  the 
usual  inattention  of  a  purchaser  renders  a  good  will  pre- 
carious, if  exposed  to  imposition."-^ 

The  foregoing  extract  very  fully  expresses  the  char- 
acter of  sui)ervision  over  fairness  in  trade  exercised  by 
our  courts  of  equity.  When  an  article  has  become  known 
by  a  catchword  or  a  peculiar  package,  any  one  seeking  to 
use  that  form  of  package,  or  a  mark  or  name  that  sug- 
gests the  catchword,  must  take  care  to  keep  within  the 
bounds  of  fairness  in  trade  in  so  doing.-^ 

Mere  colorable  distinctions,  so  arranged  as  to  escape 
notice,-^  the  use  of  labels  which  may  be  removed  by 
retail  dealers,  leaving  the  imitated  marks  free  to  effect 
deception,-"  and  all  the  other  devices  and  schemes  of 
fraudulent  competition  disclosed  by  the  reports,  are 
taken  into  consideration  in  determining  the  right  to 
ecpiitable  relief.  One  of  the  most  important  tests  is  the 
existence  of  similarities  of  detail,  whether  of  design, 
fonn,  size,  color  or  material.  Belief  w^ill  always  be 
granted  when  '*it  is  manifest  from  a  comprison  (of  the 

that   the  careless    purchaser    will  word     "Iwanta"     has      been      en- 

not  be  protected.     N.  K.  Fairbank  joined  as  being  a  fraud  upon  the 

Co.  V.  Luckel,  King  &  Cake  Soap  owner  of  the  trademark  "Uneeda," 

Co.,  88  Fed.  Rep.  694;  but  the  case  both  words  being  applied  to  biscuit. 

was  reversed  on  appeal:   s.  c,  102  National  Biscuit  Co.  v.  Baker,  95 

Fed.  Rep.  327-332,  42  C.  C.  A.  376.  Fed.    Rep.    135.        And    so    of    the 

The     test     generally     applied     is,  phrase  "Candy  Cathartic"  used  by 

whether  one  "in  the  use  of  ordi-  the  plaintiff  with  the  word  "Cas- 

nary  care"  can  be  deceived.  Sartor  carets"  and  by  the  defendant  v.ith 

V.  Smith,  Iowa,  101  N.  W.  Rep.  515.  the     word      "Cascara."        Sterling 

23 — Jenkins,  J.,   in   Pillsbury   v.  Remedy    Co.    v.    Gorey,     110     Fed. 

Flour-AIills  Co.,  64  Fed.  Rep.  841-  Rep.  372-373. 

847,  12  C.  C.  A.  432.  25— Taylor    v.    Taylor,    L.    R.    2 

24— Stuart  v.  F.  G.  Stewart  Co.,  Eq.  290;  23  L.  J.  Ch.  255. 

91     Fed.     Rep.      243,     33      C.     C.  26— Barlow  v.  Johnson,  7  R.  P. 

A.     480.       So     the     use     of     the  C.  395. 


302 


HOPKINS   ON    TRADEMARKS. 


[§121 


two  articles  in  controversy)  that  one  was  copied  from 
the  other. ' '  -'  The  court  does  not  search  for  dissimi- 
larities, but  for  points  of  resemblance.^^ 

"A\'liere  there  are  found  strong  resemblances,  the  nat- 
ural inquiry'  for  the  court  is,  why  do  they  exist  1  If  no 
sufficient  answer  appears,  the  inference  is  that  they  exist 
for  the  purpose  of  misleading. ' '  '^'-^ 

No  matter  what  minor  differences  may  exist  in  the 
tests  of  infringement  applied  by  various  courts,  it  has 
been  uniformly  noted  that  the  fact  that  purchasers  have 
no  opportunity  of  comparison  must  be  considered,  and 
the  genuine  and  alleged  infringing  marks  must  be  judged 
by  the  court,  therefore,  in  the  light  of  that  fact.^^ 


27 — Shipman,  J.,  In  Dixon  Cru- 
cible Co.  V.  Benham,  4  Fed.  Rep. 
527-530. 

28— Hostetter  v.  Adams,  10  Fed. 
Rep.    838-842.  Thus    Judge    La- 

combe,  in  considering  conflicting 
liquor  labels,  said:  "Inspection  of 
the  labels  must  carry  conviction  to 
any  unbiased  and  unprejudiced 
mind  that  the  later  label  was  pre- 
pared by  some  one  who  had  seen 
the  earlier  one,  and  that  it  was 
designed,  not  to  differentiate  the 
•  goods  to  which  it  was  affixed,  but  to 
simulate  a  resemblance  to  com- 
plainant's goods  sufficiently  strong 
to  mislead  the  consumer,  although 
containing  variations  sufficient  to 
argue  about  should  the  designer 
be  brought  into  court.  This  is  the 
usual  artifice  of  the  unfair  trad- 
er." Collinsplatt  v.  Finlayson,  88 
Fed.  Rep.  693.  In  another  recent 
case  the  same  court  says:  "There 
are  as  usual  a  number  of  minor 
differences  between  the  form  and 
the  dress  of  the  two  packages, 
which  are  expatiated  upon  in  the 
aflBdavits    and    the    brief;    but   no 


one  can  look  at  both  packages 
without  perceiving  that  there  are 
strong  resemblances,  which  could 
easily  have  been  avoided  had  there 
been  an  honest  effort  to  give  de- 
fendants' goods  a  distinctive 
dress."  National  Biscuit  Co.  v. 
Baker,  95  Fed.  Rep.  135. 

In  referring  to  conflicting  la- 
bels. Judge  Gilbert,  in  a  recent  de- 
cision, says  "these  differences  are 
such  as  are  usually  introduced 
where  the  intention  is  to  make  an 
unfair  use  of  an  established  trade- 
mark, and  at  the  same  time  so 
far  depart  therefrom  as  to  avoid 
the  charge  of  infringement."  Kos- 
tering  v.  Seattle  Brewing  &  Malt- 
ing Co.,  54  C.  C.  A.  76,  116  Fed. 
Rep.  620. 

29 — Lurton,  J.,  in  Paris  Medi- 
cine Co.  v.  W.  H.  Hill  Co.,  102 
Fed    Rep.  148-151;  42  C.  C.  A.  227. 

30 — Pillsbury  v.  Pillsbury- 
Wa.shburn  Flour  Mills  Co.,  64  Fed. 
Rep.  841-847,  12  C.  C.  A.,  432;  Man- 
hattan Med.  Co.  V.  Wood,  Fed.  Case 
No.  9026,  4  Cliff,  461,  108  U.  S. 
218;    Alleghany  Fertilizer    Co.    v. 


§  122]  INFRINGEMENT.  303 

In  conclusion  it  is  important  to  bear  in  mind  that 
courts  of  e(iuity  have  always  avoided  laying  down  any 
liard  and  fast  rules  })y  which  to  deteruiiiie  what  con- 
stitutes fraud.  Tiie  reason  for  this  absence  of  set  rules 
has  been  well  stated  as  follows:  ''Were  courts  of  e<iuity 
to  once  declare  i-ules  presciiljing  the  limitations  of  their 
I)Ower  in  dealing  with  it,  the  jurisdiction  would  be  pei'- 
petually  cramped  and  eluded  by  new  schemes  which  the 
fertility   of  man's  invention  w^ould  contrive. "•"" 

When  one  who  has  been  lawfully  advertising  himself 
as  agent  for  a  particular  article  has  his  agency  re- 
voked, he  may  be  enjoined  from  the  use  of  the  word 
*' agency"  even  though  he  continues  to  deal  in  the  same 
articles  as  before;^-  and  the  agent  may  enjoin  the  use 
of  a  label  naming  him  as  the  agent  for  the  product.-^^ 

§  122.  Restraint  of  use  of  misleading  advertisements, 
and  the  like.— The  requirement  of  fairness  in  trade  has 
led  to  the  injunction  of  the  use  of  circulars  containing 
garbled  extracts  from  a  letter,  published  for  the  pur- 
pose of  diminishing  plaintiff's  sales,  the  part  of  the 
letter  published  having  a  meaning  contraiy  to  that  of 
the  letter  as  a  wholc^"*  The  use  of  the  autographic  sig- 
nature of  the  defendant's  former  distiller  has  been  en- 
joined, when  the  distiller  had  withdrawn  from  defend- 
ant's  employment   and   established   a   competing   distil- 

Woodside,    Fed.    Case    No.    206.    1  Fed.   Rep.   172-174,  affirmed   under 

Hughes,    115;    Sawyer   v.    Kellogg,  same  title,  48  C.  C.  A.  67,  108  Fed. 

7   Fed.  Rep.   721;    Sawyer  v.  Kel-  Rep.  839. 

logg,  9  Fed.  Rep.   601;    Liggett  &  33— Coleman   v.   Flavel,   40  Fed. 

Myers  Tob.  Co.  v.  Hynes,  20  Fed.  Rep.  854. 

Rep.  883;    Hostetter  v.  Adams,  10  34— Halstead    v.     Houston,     111 

Fed.  Rep.  838-842.  Fed.  Rep.  376. 

31_Weinstock,  Lubin  &  Co.  v.  35— George  T.  Stagg  Co.  v.  Tar- 
Marks.  109  Cal.  529-539.  lor,  95  Ky.  651,  27  S.  W.  Rep.  247. 

32 — Edison  v.    Hawthorne,    106 


304  HOPKINS   ON    TR.U)EMARKS.  [§  123 

§  123.  Infringement  in  another  jurisdiction.— Where 
goods  bearing  an  infringing  mark  are  in  possession  of 
the  defendant,  within  the  jurisdiction,  though  intended 
for  exportation,  the  jurisdiction  of  the  court  is  com- 
plete and  relief  will  be  granted.^^ 

But  where  the  act  of  infringement  occurs  wholly  in 
a  foreign  country  an  entirely  different  question  is  pre- 
sented, and  relief  has  been  denied  even  though  the  court 
had  jurisdiction  over  the  parties,  and  the  mark  involved 
had  been  registered  in  the  United  States;  Judge  Kirk- 
patrick  remarking  that  "to  hold  that  the  branding  of 
goods  in  a  foreign  countiy  with  a  trademark  registered 
in  the  United  States  constitutes  unfair  competition  in 
trade  would  be  but  another  way  of  extending  the  trade- 
mark rights  of  a  citizen  of  the  United  States  beyond  the 
borders  of  the  country.  "^^ 

124.  Trademarks  of  variable  sound  and  pronuncia- 
tion.— The  owner  of  a  valid  trademark  is,  under  all  the 
authorities,  entitled  to  equitable  protection  against  one 
who  subsequently  adopts  a  mark  calculated  to  create 
confusion  of  the  goods  of  the  respective  parties. 

Thus  the  use  of  the  mark  "Iwanta"  was  enjoined  by 
Judge  Lacombe  because  it  was  expressive  of  the  same 
idea  as  ''Uneeda"  previously  applied  to  biscuit,^^  and 
in  a  later  case,  where  the  owner  of  the  trademark  ''Yu- 
sea"  sought  to  enjoin  the  use  of  the  mark  "U-C-A" 
Judge  Hazel   said: 

''The  controlling  contention  in  this  action  is  whether 
the  complainant,  having  a  prior  and  exclusive  right  to 
the  designation  'Yusea,'  has  thereby  also  obtained  an 
exclusive  right  to  the  use  of  the  various  pronunciations 

36 — Orr-Ewing  v.  Johnson,  13  C.  38— National  Biscuit  Co.  v.  Bak- 
D.  434,  7  A.  C.  219.  er,  95  Fed.  Rep.  135. 

37— Vacuum  Oil  Co.  v.  Eagle  Oil 
Co.,  122  Fed.  Rep.  105. 


§  125]  INFRINGEMENT.  305 

and  the  complex  words  or  syllabic  formations  to  which 
this  particular  word  is  susceptible.  A  moment's  reflec- 
tion reveals  the  various  pronunciations  and  composite 
words  to  which  'Yusea'  may  be  adapted.  A  trade- 
mark which  is  variously  pronounced  and  distorted  to 
suit  the  jjurposes  of  trade  and  the  fancies  of  the  manu- 
facturer in  his  endeavor  to  catch  the  public  eye  may  yet 
be  protected,  within  the  fair  and  reasonable  scope  of 
a  trademark,  however  artfully  it  may  be  conceived.  It 
appears  from  the  affidavits  of  comi^lainant's  manager 
and  advertising  agent,  the  person  who  conceived  the 
word,  that  the  common  pronunciation  by  the  trade  in 
general  is  as  if  it  were  spelt  'You  see  a,'  and  that  the 
mantles  manufactured  by  complainant^  are  commonly 
known  as  'You-see-a  mantles.'  This  is  accentuated 
by  the  ordinary  pronunciations  that  follow  a  casual  ob- 
servation of  this  complex  word.  The  unique  alterations 
in  the  pronunciations  of  the  word  must,  I  think,  be  re- 
garded as  incidental  to  its  use.  This  perhaps  enhances 
its  value  as  an  advertising  medium.  They  do  not  change 
the  registered  designation,  and  the  word  'Yusea'  re- 
mains the  dominating  word  in  the  trademark.  .  .  The 
trademark,  because  of  its  variable  sound  and  pronuncia- 
tion, became  more  prominently  known  to  the  public,  and 
thereby  served  the  purpose  for  which  it  was  conceived; 
i.  e.,  to  attract  the  attention  of  the  public  to  the  original 
conception. '  '^^ 

§  125.  The  effect  of  a  plurality  of  marks  for  a  single 
article. — It  would  seem  obvious  that  a  trader  might 
acquire  and  own  as  many  trademarks  as  he  desires.  It 
would  seem  that  he  might,  if  he  desired,  have  as  many 
different  trademarks  for  the  same  article  of  merchan- 
dise as  he  saw  fit.    It  seems  perfectly  clear  that  a  trade- 

39— Welsbach  Light  Co.  v.  Adam,  107  Fed.  Rep.  463,  465. 


306  HOPKINS   ON   TR.NDEMARKS.  [§  125 

mark  which  is  valuable  because  it  attracts  custom  in 
cue  community  may  be  utterly  valueless  in  another. 

The  British  decisions  are  replete  with  instances  of 
special  marks  used  for  colonial  trade,  the  same  article 
being  sold  in  Great  Britain  under  a  different  mark.  As 
a  matter  of  fact  many  articles  of  merchandise  are  dealt 
in  under  a  plurality  of  marks  in  this  countrj^,  certain 
marks  being  used  in  the  Northern  trade,  and  different 
marks  on  the  same  merchandise  for  the  Southern  and 
Pacific  Coast  trade.  It  would  seem  that  the  courts 
would  be  as  little  concerned  with  the  number  of  marks 
owned  and  used  by  a  manufacturer  as  they  would  be 
with  the  number  of  patents  or  copyrights  he  might  own 
or  the  number  of  any  other  chattels  it  might  please  him 
to  acquire  and  for  which  he  haply  has  .the  means  to 
pay.  And  yet,  these  views  which  on  their  face  appear 
manifestly  obvious,  are  in  conflict  with  the  sole  decision 
so  far  rendered  upon  this  question  and  to  which  we  will 
now  briefly  advert. 

In  Candee  v.  Deere,*^  the  complainant  manufactured 
'^Moline"  plows  at  Moline,  Illinois.  On  different  qual- 
ities of  these  plows  they  used  the  marks  "A.  No.  1," 
^'A.  X.  No.  1,"  "No.  1,"  "X.  No.  1,"  "No.  3,"  and 
*'B.  No.  1."  The  word  "Moline"  being  geographical, 
the  complainant's  case  failed,  and  the  letters  and  num- 
bers being  m.erely  descriptive  of  different  qualities  of 
the  plow  did  not  help  the  complainant's  case. 

This  case  consequently,  appears  quite  irrelevant  to  the 
present  question ;  but  it  has  been  used  as  the  basis  of  the 
decision  of  Judge  Jenkins  dealing  directly  with  the  effect 
of  ownership  of  a  plurality  of  marks  used  on  the  same 
article,  in  which  he  says: 

"The  principal  question  which  is  suggested  by  the  bill 
and  the  evidence  is  whether  the  manufacturer  of  a  single 

40 — Candee  v.  Deere,  54  111.  App.  439. 


§  125J  INFRINGEMENT.  307 

article  has  the  right  to  use,  and  be  protected  in  the  use 
of,  more  than  one  trademark  for  that  article.  1  find 
little  authority  upon  the  subject,  and  have  given  to  the 
question  much  consideration.  Upon  principle,  I  think 
that  he  cannot,  A  trademark  must  denote  origin.  A 
trademark  is  defined  by  Mr.  Upton  to  be  the  name,  sym- 
bol, figure,  letter,  form,  or  device  adopted  and  used  by 
a  manufacturer  or  merchant  in  order  to  designate  the 
goods  he  manufactures  or  sells,  and  distinguish  them 
from  those  manufactured  or  sold  by  another,  to  the  end 
that  they  may  be  known  in  the  market  as  his,  and  thus 
enable  him  to  secure  such  profits  as  result  from  a  repu- 
tation for  superior  skill,  industry  or  enterprise.  Upton, 
Trademarks,  p.  9,  c.  1.  How  can  that  purpose  be  ac- 
complished, if  a  manufacturer  dealing  in  a  single  article 
used  a  thousand  different  trademarks  to  designate  the 
article  and  its  origin^  Such  use  necessarily  produces 
confusion,  and  fails  of  the  single  purpose  of  the-  trade- 
mark, to  designate  with  certainty  the  origin  of  the  prod- 
uct. Certainly  no  manufacturer  would,  in  regard  of  self- 
interest,  indulge  in  such  a  practice;  for  he  would  there- 
by defeat  the  very  purpose  he  sought  to  accomplish. 
Tliis  consideration  has  led  me  to  the  conviction  that  the 
complainant,  the  originator  of  perforated  rolled  toilet 
pajier,  would  not  do  that  which  would  blind  the  public 
mind  to  the  originator  and  manufacturer  of  the  article, 
and  would  tend  to  dissipate  its  trade.  It  is  more  prob- 
able (and  the  evidence,  I  think,  sustains  the  conclusion) 
that  its  design  was,  by  the  various  names,  to  distinguish 
between  the  size,  shape,  and  quality  of  the  paper  manu- 
factured, and  that  the  marks  were  not  placed  thereon 
as  indicating  origin.  The  only  authority  which  I  have 
been  able  to  find  passing  directly  upon  this  question  is 
the  case  of  Candcc  v.  Deere,  54  111.  439,  457.  In  the  con- 
clusion reached  by  the  supreme  court  of  Illinois  upon 
this  particular  question,  I  fully  concur.  It  is  remark-' 
able  that,  with  respect  to  so  simple  a  product  as  that  in^ 


308  HOPKINS   ON   TRADEMARKS.  [§  126 

question,  it  should  be  found  that  so  large  a  number 
of  claimed  trademarks  should  be  used  by  one  manu- 
facturer, A  court  of  equity  cannot  be  impressed  by  an 
appeal  to  protect  that  which  produces  infinite  confusion. 
It  may  be  that  in  the  struggle  for  trade  the  whims  of 
retailers  must  be  consulted,  and  that  rivalry  between 
dealers  to  present  something  attractive  to  the  public  eye 
must  exist;  but  courts  of  equity  do  not  sit  to  indulge  the 
whims  of  purchasers,  or  to  protect  one  in  creating  con- 
fusion. They  sit  to  protect  and  to  enforce  legal  and 
equitable  rights.  If  this  bill  can  be  maintained,  the  ex- 
tent of  the  proprietorship  of  the  complainant  in  the  use 
of  arbitraiy  names  applied  to  the  subject  of  toilet  paper 
would  be  limited  only  by  the  imagination  of  its  offi- 
cers."" 

§  126.  Confusion  of  mail  matter  as  test  of  the  right  to 
injunction. — The  fact  that  the  use  of  the  mails  is  involved 
in  the  majority  of  commercial  transactions  has  made 
the  question  of  the  confusion  of  mail  matter  one  of  the 
tests  most  frequently  applied  in  cases  involving  firm 
names,  corporate  names,  and  the  like,  to  determine 
whether  or  not  the  plaintiff  is  entitled  to  the  relief 
sought.  Thus,  we  find  in  a  case  where  the  Continental 
Insurance  Company  of  New  York,  sought  to  enjoin  the 
Continental  Fire  Association  of  Texas  from  the  use  of 
its  corporate  name,  Judge  Meek  gave  as  one  of  the  prin- 
cipal grounds  for  denying  the  relief  sought  that  *'on 
account  of  the  marked  dissimilarity  of  the  addresses  of 
the  two  companies,  mail  matter  intended  for  one  of  them 
will  hardly  be  misdirected  or  miscarried  to  the  other.  "^^ 
In  a  more  recent  case  Judge  Kohlsaat,  in  enjoining  the 
name  ''Liliputian  Outfitters"  at  the  instance  of  a  com- 

41 — Albany  Perforated  Wrapping  42 — Continental  Insurance  Co. 
Paper  Co.  v.  John  Hoberg  Co.,  v.  Continental  Fire  Assn.,  96  Fed. 
102   Fed.  Rep.  157,  158.  Rep.  846,  849. 


§  126j  INFRINGEMENT.  1109 

plainant  doing  business  as  the  ''Liliputian  Bazaar," 
based  the  right  to  relief  upon  the  probable  confusion 
of  mail  matter,  says,  "It  is  evident  that  complainant 
is  a  manufacturer  and  dealer,  and  that  he  does  a  large 
mail-order  business,  as  does  also  defendant.  It  hardly 
needs  saying  that  the  proficiency  of  the  mails  at  this 
date  is  such  that  ev'eiy  nook  and  comer  of  the  nation 
as  well  as  of  JManitoba  is  as  accessible  as  were  places  50 
miles  away  from  New  York  a  few  years  ago.  It  cannot 
be  otherwise  than  that  the  advertising  and  canvassing 
of  these  two  rival  concerns  pass  and  repass  each  other 
innumerable  times  in  their  journeys  to  the  centers  of 
trade  as  well  as  to  the  homes  of  the  people— mute  con- 
testants for  the  favor  of  supjjlying  the  wants  of  each  cus- 
tomer. '  '*^ 

In  a  New  York  case,  a  plaintiff  who  was  the  originator 
of  a  proprietary  remedy  sold  to  the  defendant  his  busi- 
ness and  good-will,  including  the  sole  right  to  use  the 
names  "Dr.  David  Kennedy,  of  Rondout,  N.  Y.,"  and 
"Dr.  D.  Kennedy,  of  Eondout,  N.  Y."  It  was  subse- 
quently held  that  the  defendant  had  the  right  to  receive 
and  open  all  letters  addressed  to  the  plaintiff  by  either 
of  the  forms  of  addresses  named.^^ 

In  a  subsequent  suit,  the  plaintiff  sought  to  enjoin 
the  defendant  from  receiving  and  opening  letters  ad- 
dressed to  him  by  name  at  Kingston,  N.  Y.  In  gi-anting 
the  injunction,  Betts,  J.,  said:  "It  ought  to  be  an  ex- 
tremely difficult  matter  for  one  person  or  corporation  to 
obtain  the  right  to  open  and  examine  another  person's 
private  correspondence  without  his  consent.  There  is 
something  so  repugnant  in  such  a  proposition  to  all  our 
ideas  of  common  fairness  that  to  simply  state  it  is  to 

43— Ball  V.  Best,  135  Fed.  Rep.  44— Kennedy  Corp.  v.  Kennedy, 
434,  437.  55  N.  Y.  Supp.  917. 


310  HOPKINS   ON   TRADEMARKS.  [§  127 

arouse  antagonism  thereto.  I  am  of  the  opinion  that 
this  can  never  become  the  settled  law  of  this  state  in  any 
case  unless  it  clearly  and  unequivocally  appears  that 
both  parties  at  the  time  of  making  any  contract,  agree- 
ment, or  bill  of  sale  relating  thereto  clearly  understood 
and  agreed  that  that  was  to  be  the  result  of  the  arrange- 
ment entered  into."*^ 

''In  American  Clay  Mfg.  Co.  of  Pennsylvania  v. 
American  Clay  Mfg.  Co.  of  New  Jersey,  198  Pa.  189,  47 
Atl.  936,  tlie  plaintiff  was  a  Pennsylvania  corporation, 
and  the  defendant  a  corporation  of  New  Jersey  author- 
ized to  do  business  in  Pennsylvania.  Both  were  engaged 
in  the  same  line  of  trade  at  Pittsburg,  and  the  result 
was  a  confusion  in  correspondence  and  in  the  drawing 
and  honoring  of  cheeks  and  drafts;  and  the  defendants 
were  enjoined.  'There  are  two  classes  of  cases,'  says 
Mitchell,  J.,  'involving  judicial  interference  with  the 
use  of  names:  First,  where  the  intent  is  to  get  an 
unfair  and  fraudulent  share  of  another's  business;  and, 
second,  where  the  effect  of  defendant's  action,  irrespect- 
ive of  his  intent,  is  to  produce  confusion  m  the  public 
mind,  and  consequent  loss  to  the  complainant.  In  both 
cases  the  courts  of  equity  administer  equitable  re- 
lief.' '"'^ 

§  127.  Hotel  names  and  rights  created  thereby.— As 
we  have  seen  elsewhere,  as  a  general  rule,  the  name  of  a 
place  of  business  will  be  protected  as  against  competitors 
who  adopt  misleading  signs  or  other  advertising  matter 
in  order  to  divert  to  themselves  the  business  established 
by  the  one  first  adopting  the  name.  It  is  apparent 
that  there  is  this  distinction  between  the  names  of 
hotels  and  the  names  of  other  places  of  business ;  as  to 

45— Kennedy  v.  Dr.  David  Ken-  46— Archbald,  J.,  in  Van  Hou- 
nedy  Corp.,  66  N.  Y.  Supp.  225-  ten  v.  Hooton  Cocoa  &  Chocolate 
229.  Co.,  130  Fed.  Rep.  600,  603. 


§  127]  INFRINGEMENT.  311 

other  commercial  enterprises  there  may  be  unfair  com- 
petition between  places  of  business  located  in  different 
cities  or  sections,  and  doing  a  mail-order  business,  or 
transacting  business  generally  by  mail,  while  as  to  hotels, 
no  such  unfair  competition  can  arise  because  there  can  bo 
no  confusion  created  by  two  hotels  in  different  cities, 
having  the  same  name.  The  names  of  hotels,  moreover, 
stand  in  a  class  by  themselves  because  of  the  complex 
character  of  the  business  involved.  In  one  of  the  early 
cases,  Campbell,  J.,  in  a  case  involved  in  the  name 
** Irving  House,"  drew  this  distinction  in  the  following 
words:  "We  think  that  the  principle  of  the  rule  is  the 
same,  to  whatever  subject  it  may  be  applied,  and  that 
a  party  will  be  protected  in  the  use  of  a  name,  which 
he  has  appropriated,  and  by  his  skill  made  valuable, 
whether  the  same  is  upon  articles  of  personal  property 
which  he  may  manufacture,  or  applied  to  an  hotel  where 
he  has  built  up  a  prosperous  business.  ...  To  make 
the  application,  if  one  man  has,  by  close  attention  to 
the  comfort  of  his  guests,  and  by  superior  energ}^,  made 
his  hotel  desirable  for  the  traveler,  and  caused  its  name 
to  become  popular  throughout  the  land,  another  man 
ought  not  to  be  permitted  to  assume  the  same  name  in 
the  same  town,  and  thus  deprive  him  who  first  appro- 
priated the  name  of  some  portion  of  the  fruits  of  that 
goodwill  which  honestly  belongs  to  him  alone."'*'' 
Under  this  doctrine,  the  hotel  names  ''Columbia,"^* 
"McCardel  House, "^»  "Osborne  House, "^'^  "Vonder- 
bank  Hotel,  "^^  "AVhat  Cheer,  "^^  a^^j  ^' Woods  Hotel,  ""^^ 
have  been  recognized  and  protected  in  equity. 

47 — Howard     v.     Henriques,     3  51 — Vonderbank  v.    Schmidt,   44 

Sandf.  725.  La.  Ann.  264. 

48— Whitfield  v.  Loveless,  64  Off.  52 — Woodward  v.  Lazar,  21  Cal. 

Gaz.  442.  449. 

49 — McCardel   v.   Peck,   28   How.  53 — Woods  v.   Sands,   Fed.   Case 

Pr.  120.  No.  17,963. 

50— Hudson  v.  Oshorne,  21  L.  T. 
N.  S.  CS6. 


312  HOPKINS   ON   TRADEMARKS.  [§  127 

The  owners  of  hotels  have  further  been  protected  by 
injunction  against  the  unauthorized  use  of  the  name  of 
the  hotel  by  persons  running  carriages  and  other  convey- 
ances for  the  transportation  of  travelers.  Thus  the  pro- 
prietor of  the  Irving  Hotel  was  granted  an  injunction 
against  the  use  of  the  name  of  the  hotel  by  the  defend- 
ant upon  his  coaches,  and  upon  badges  worn  by  his  em- 
ployees. In  granting  the  injunction,  Cantel,  J.,  said, 
''The  question  is,  whether  the  defendants  have  com- 
mitted a  fraud.  I  cannot  doubt  that  their  intention 
was  to  mislead,  and  to  induce  travelers  to  believe  that 
they  were  servants  of  the  proprietor  of  the  Irving 
Hotel.  "^^  A  similar  rule  was  made  in  favor  of  the 
lessee  of  the  ''Revere  House"  under  practically  the  same 
circumstances.^^ 

More  recently,  the  supreme  court  of  New  York  granted 
an  injunction  to  restrain  the  use  of  the  name  of  the 
*' Holland  House"  as  a  trademark  for  cigars.  At  the 
time  that  the  cigars  so  marked  were  placed  upon  the 
market,  there  was  no  hotel  of  the  name  open  for  busi- 
ness in  the  city  of  New  York.  The  plaintiffs  were  the 
proprietors  of  a  building  in  the  course  of  construction, 
which  was  to  be  used  for  hotel  purposes,  however,  and 
that  building  was  well  known  throughout  the  city  of 
New  York  as  the  "Holland  House."  The  injunction  was 
granted  upon  the  ground  that  the  defendant  intended  to 
falsely  represent  to  the  public  that  the  cigars  were  in 
some  way  connected  with  the  hotel  known  as  the  "Hol- 
land House.  "^^ 

54 — stone  v.   Carlan,  Cox,  Case        56— Kingsley  v.  Jacoby,    20    N. 

No.  104.  Y.  Supp.  44. 

55 — Marsh   v.   Billings,   7    Gush. 
322. 


CHAPTER  IX. 

REGISTRATION. 

§  128.  Introductory.— The  English  Patents,  Designs 
and  Trademarks  Act,  1883-1888,  })rovides  that  there  can 
be  no  institution  of  proceedings  to  prevent  or  to  recover 
damages  for  the  infringement  of  a  trademark  capable 
of  registration  unless  it  has  been  registered.^  This  pro- 
vision does  not  occur  in  the  acts  of  congress  of  1881  or 
1905,  and  could  have  no  force  or  effect  if  it  did,  as  there 
can  be  no  valid  trademark  legislation  by  congress  except 
under  and  by  virtue  of  the  commerce  clause  of  the  federal 
constitution  (clause  3  of  sec.  VIII).  As  stated  by  Mr. 
Justice  Miller:  *'A\Tien,  therefore,  congress  undertakes 
to  enact  a  law  which  can  only  be  valid  as  a  regulation 
of  commerce,  it  is  reasonable  to  expect  to  find  on  the 
face  of  the  law,  or  from  its  essential  nature,  that  it  is  a 
regulation  of  commerce  with  foreign  nations,  or  among 
the  several  states,  or  with  the  Indian  tribes.  If  not  so 
limited,  it  is  in  excess  of  the  power  of  congress.  "^ 

§  129.  The  invalid  registration  acts.— In  order  to  ob- 
tain a  substantial  idea  of  the  difiSculties  which  have  at- 
tended our  national  legislation  upon  trademarks,  it  is 
only  necessary  to  read  the  text  of  the  several  enactments 
of  congress,  which  are  collated  in  the  appendix  to  this 
book.  The  act  of  July  8,  1870,  was  based  upon  an  entire 
misconception  or  disregard  of  the  power  resident  in  con- 
gress. Both  it  and  the  subsequent  penal  act  of  August 
14,  1876,  were  framed  with  the  evident  intention  of  pro- 

1—46   and   47   Vict.,   c.   57,    sec.         2— Trademark   Cases,   100   U.   S. 
77;    Hazzopulo    v.    Kaufmann.    23     82. 
Sol.  J.  819;   Goodfellow  v.  Prince, 
L.  R.  35  Ch.  D.  9. 

313 


314  HOPKINS   ON   TRADEMARKS.  [§  130 

viding  a  uniform  trademark  law  for  the  several  states. 
As  will  be  seen  by  reference  to  the  annotations  to  those 
aet«,  in  tlie  appendix,  their  validity  was  questioned  and 
negatived  upon  circuit,"  and  it  was  finally  settled  by  the 
supreme  court  that  they  were  unconstitutional  and  there- 
fore void.'* 

§  130.    The  power  of  congress  to  protect  trademarks.— 

"The  commerce  clause  of  the  federal  constitution  pre- 
sents the  remarkable  instance  of  a  national  power  which 
was  comparatively  unimportant  for  eighty  years,  and 
which  in  the  last  thirty  years  has  been  so  developed  that 
it  is  now,  in  its  nationalizing  tendency,  perhaps  the  most 
important  and  conspicuous  power  possessed  by  the  fed- 
eral government. "° 

"With  the  judicial  determination  that  the  act  of  July 
8,  1870,  was  void,  came  the  realization  by  congress  that 
within  the  scope  of  authority  contained  in  the  words 
"The  congress  shall  have  power  ...  to  regulate 
commerce  with  foreign  nations,  and  among  the  several 
states,  and  with  the  Indian  tribes,"  must  rest  the  foun- 
dation for  its  future  trademark  legislation.  With  this 
fact  before  it,  congress  proceeded  to  the  enactment  of 
the  act  of  March  3,  1881,  embodied  in  the  supplement 
to  the  Revised  Statutes  as  section  322.  No  reason  ap- 
pears for  the  fact  that  under  that  act  protection  and  the 
benefits  of  registration  were  extended  only  to  "owners 
of  trademarks  used  in  commerce  with  foreign  nations  or 
with  the  Indian  tribes,"  and  not  to  owners  of  trade- 
marks used  in  interstate  commerce.  But  such  is  the  fact, 
which  it  was  left  to  future  legislation  to  remedy.^ 

3— Leidersdorf  v.   Flint,   8  Biss.  States    now    in    force     .     .     .     re- 

327.  late  only  to  trademarks  specially 

4— Trademark  Cases,   100   U.   S.  used  in  commerce  with  foreign  na- 

82.  tions,   or   with  the    Indian    tribes. 

5— Prentice  &   Egan,   Commerce  Act  of  March   3,   1881    ("21    St.   at 

Clause  of  the  Federal  Constitution,  I.arge,  ch.  137,  sec.  1).     They  are 

P-  1-  particularly   restricted   so   as    not 

G — "The     laws     of    the    United  to  give  cognizance  to  any  court  of 


§131J  REGISTRATION.  315 

§  131.  The  constitutionality  of  the  present  re^stration 
act.— It  is  a  remarkable  fact  that  during  tlie  period  fi-oni 
March  3,  1881,  to  February  20,  1905,  the  question  of  the 
constitutionality  of  the  act  of  1881  was  never  i)assed 
upon  by  any  court. 

The  Court  of  Appeals  of  the  7th  Circuit,  speaking  by 
Judge  Jenkins,  held  that  the  validity  of  the  act  of  1881 
was  ** fairly  doubtful."^ 

In  the  same  case,  the  United  States  Supreme  Court 
expressly  declined  to  pass  upon  the  question  of  consti- 
tutionality.* 

So  the  act  of  1881,  more  limited  in  its  scope,  and  essen- 
tially a  mere  registration  act,  has  been  superseded  by  an 
act  of  much  wider  scope,  while  as  yet  the  power  of  con- 
gress to  create  any  enactment  whatever  relative  to  the 
registration  of  trademarks  is  not  only  undetennined,  but 
clouded  by  the  doubt  expressed  in  the  language  of  the 
Court  of  Appeals  of  the  7th  Circuit.  The  labor  per- 
formed by  that  court  in  the  development  of  the  law  of 
unfair  competition  entitles  its  dictum  to  high  respect; 
and  because  of  the  doubt  which  that  court  has  seen  fit  to 
express,  as  well  as  the  likelihood  that  the  broad  scope 
of  the  present  trademark  act  will  cause  its  constitution- 
ality to  be  determined  at  no  distant  date,  it  may  be  well 
to  note  the  argument  which  suggests  itself  as  that  which 
must  be  overcome  if  the  present  act  is  to  be  held  con- 
stitutional. 

It  being  conceded  that  the  jurisdiction  of  congress 
over  the   subject  of  trademarks,   if  it  has   any   at  all, 

the  United  States  in  an  action  or  7 — Illinois    Watch    Case    Co.    v. 

suit  between  citizens  of  the  same  Elgin  National  Watch  Co.,  94  Fed. 

state,  unless  the  trademark  in  con-  Rep.,    667-669,    87    Off.    Gaz.,    2323, 

troversy  is  used  on  goods  intend-  35  C.  C.  A.    237. 

ed  to  be  transported  to  a  foreign  8 — Elgin  National  Watch  Co.  v. 

country,  or  in   lawful   commercial  Illinois  Watch  Case  Co.,  179  U.  S., 

intercourse  with  an  Indian  tribe."  665-667.          And     see    Warner    v. 

Wheeler,    J.,    in    Luyties    v.    Hoi-  Searle   &    Hereth    Co.,    191    U.    S., 

lender,  21  Fed.  Rep.  281.  195-205. 


316  HOPKINS   ON   TR.VDEM^VRKS.  [§  131 

aside  from  the  treaty-making  power,  arises  solely  by 
authority  of  the  commerce  clause  of  the  federal  consti- 
tution, it  is  urged  that  unless  trademarks  themselves  are 
the  subjects  of  interstate  commerce,  the  jurisdiction 
of  congress  fails. 

A  trademark,  as  we  have  seen  elsewhere,  is  an  incor- 
poreal hereditament,  having  no  independent  life  or  ex- 
istence of  its  own,  but  existing  only  as  appendant  to  the 
good-will  of  a  business,  or  as  an  integral  part  of  that 
good-will.  When  the  trademark  is  applied  to  an  article 
of  commerce,  that  article  may  be  the  subject  of  inter- 
state commerce,  but  it  by  no  means  follows  that  the 
trademark  affixed  upon  the  article,  or  the  package  con- 
taining the  article,  is  itself  being  dealt  with  as  a  subject 
of  interstate  traffic.  This  distinction,  it  has  been  urged, 
is  amply  supported  by  the  language  of  the  supreme  court 
in  Champion  v.  Ames,  188  U.  S.,  321,  where  it  is  said 
that  **  Lottery  tickets  are  subjects  of  traffic,  and  there- 
fore of  commerce.' ' 

The  status  thus  fixed  upon  lottery  tickets  as  the  sub- 
jects of  interstate  commerce  is  curiously  distinguished 
from  policies  of  fire  and  marine  insurance  by  the  su- 
i:)reme  court;  but  the  language  which  that  tribunal  has 
more  than  once  employed  in  reference  to  insurance  pol- 
icies is  instructive  as  indicating  its  probable  attitude 
toward  trademarks.  Thus  in  one  of  the  later  insurance 
cases,  Mr.  Justice  McKenna  says:  "The  contract  of 
insurance  is  not  an  instrumentality  of  commerce.  The 
making  of  such  a  contract  is  a  mere  incident  of  commer- 
cial intercourse."^ 

The  distinction  between  lottery  tickets  and  insurance 
policies  is  one  which  has  not  only  baffled  the  layman,  but 
aroused  much  discussion  between  members  of  the  bar; 
but  in  the  language  of  the  supreme  court  in  the  lottery 
cases,   and  in  the  insurance  cases,   the  court  has   uni- 

9 — New     York     Life     Insurance   Co.  v.  Cravens,  178  U.  S.,  389-401. 


§  131]  REGISTRATION.  317 

formly  held  that  nothing  which  is  not  an  instrumentaUty 
of  commerce  can  come  within  the  purview  of  the  inter- 
state commerce  chiuse  of  the  constitution. 

In  Williams  v.  Fears,  179  U.  S.,  270,  Mr.  Chief  Justice 
Fuller  has  emphasized  "the  difference  between  inter- 
state commerce  or  an  instrumentality  thereof  on  the 
one  side,  and  the  mere  incidents  which  may  attend  the 
carrying  on  of  such  commerce  on  the  other." 

It  would  seem  clear  that  the  sharpest  attack  upon  the 
constitutionality  of  the  present  act  would  be  along  the 
line  of  the  cases  referred  to,  and  if  the  court  determined 
as  a  matter  of  fact,  that  trademarks  were  mere  incidents 
attending  the  carrying  on  of  interstate  commerce,  it 
would  necessarily  follow  that  the  present  act,  as  well 
as  its  predecessor,  has  been  founded  upon  a  misconcep- 
tion of  the  jurisdiction  of  congress.  AVithout  weighing 
the  argument,  or  pursuing  it  in  the  light  of  other  deci- 
sions of  the  supreme  court,  such  as  those  which  relate 
to  bills  of  lading  and  the  like,  and  without  venturing  a 
personal  opinion  upon  the  merits  of  the  argument,  it 
will  suffice  to  say  that  the  present  act  is  of  extremely 
doubtful  constitutionality,  and  that  section  17,  giving 
jurisdiction  to  certain  courts  over  trademarks  registered 
in  accordance  with  the  provisions  of  the  act,  without  re- 
gard to  the  amount  in  controversy  (a  provision  incor- 
porated from  section  7  of  the  act  of  1881)  offers  the  op- 
portunity of  readily  raising  the  constitutional  question. 
It  is  manifestly  desirable  that  the  question  should  be 
raised  and  finally  disposed  of  in  the  near  future,  that 
it  may  be  definitely  settled. 

This  argument  is  substantially  embodied  in  the  re- 
port of  the  Committee  on  the  Judiciary  of  the  House 
of  Representatives  during  the  Forty-sixth  Congress,  as 
a  result  of  the  deliberations  of  that  committee  upon  a 
resolution  to  amend  the  constitution,  and  a  proposed  bill 
for  which  the  act  of  1881  was  subsequently  substituted. 
The  proposed  amendment  to  the  constitution  is  embodied 


318  HOPKINS   ON   TRADEM.VRKS.  [§  131 

iu  the  committee's  report,  a  poition  of  which  is  as  fol- 
lows :  ' '  The  bill  seeks  to  re-enact  substantially  the  trade- 
mark legislation  of  1870  (Rev.  Stat.,  sec.  4937-4947,  in- 
clusive) save  that  it  is  confined  to  foreign  and  interstate 
commerce.  Its  theory  is  that  by  thus  separating  them 
from  interstate  commerce  the  objections  of  the  supreme 
court  as   to   constitutionality  will  be  removed. 

' '  The  resolution  to  amend  the  constitution  is  as  follows : 

ARTICLE  XVI. 

"Section  1.  Congress  for  promotion  of  trade  and  manu- 
facture, and  to  carry  into  effect  international  treaties, 
shall  have  power  to  grant,  i3rotect,  and  regulate  the  ex- 
clusive right  to  adopt  and  use  trademarks. 

"It  is  based  ujoon  the  idea  that  such  legislation,  though 
confined  to  foreign  and  interstate  commerce,  is  uncon- 
stitutional, or  its  advocates  may  only  fear  that  that  may 
be  so,  and  wish  the  amendment  ex  ahundante  cautela, 
and  to  give  confidence  to  those  using  trademarks. 

"If  the  Congress  of  the  United  States  now  has  power 
to  pass  such  laws,  the  amendment  would  be  useless.  Has 
it  that  power? 

"After  careful  consideration  we  are  of  oxjinion  that  it 
has  not.  The  supreme  court  in  the  foregoing  opinion 
avoided  deciding  that  question.  A  trademark  is  a  con- 
venience of  commerce.  Its  purj^ose  is  to  identify  the 
thing  to  be  sold. 

"But  is  no  more  than  the  guaranty  in  writing,  or  by 
some  words,  sign,  or  device,  attached  to  the  thing  to  be 
sold,  that  it  is  what  the  seller  represents  it  to  be  by  such 
writing,  etc.  By  themselves  they  are  not  merchandise. 
Their  only  use  is  to  attach  to  merchandise  for  such  iden- 
tification. They  are  not  necessary  to  commerce.  On 
the  countless  things  sold  in  this  country,  foreign  and  do- 
mestic, there  are  no  trademarks  but  on  about  8,000. 

"In  Paul  V.  Virginia  (8  Wallace)  the  court  held  that 
congressional  control  did  not  cover  policies  of  insurance 


§  131]  REGISTRATION.  319 

sent  from  one  state  of  the  Union  into  anotlier  wliere  a 
premium  was  paid  therefor.  Tliey  said  tlie  poUcies 
were  but  'mere  contracts  of  indemnity  against  loss  by 
fire.'  We  think  trademarks  mere  contracts  of  indemnity 
against  loss  by  fraud. 

''Thus  the  supreme  court  has  held  a  contract  to  l>e  with- 
in federal  control  in  Almy  v.  California.  That  was  a 
bill  of  lading  for  goods  to  be  shipped  out  of  the  state. 
But  that  decision  rested  solely  ui)on  the  ground  that  'a 
bill  of  lading  or  some  other  instrument  of  the  same  im- 
port is  necessarily  always  associated  with  every  ship- 
ment of  articles  of  commerce  from  the  ports  of  one 
country  to  another.  The  necessities  of  commerce  require 
it.'  (See  Almi/  v.  California,  24  Howard,  170.)  And 
that  decision  rests  not  on  the  power  of  congress  over 
commerce,  but  on  the  prohibition  against  tlie  states  tax- 
ing exports,  etc.  The  bill  of  lading  was  but  evidence 
of  the  contract  of  shipping.  Taxing  it  taxed  the  exported 
article.  And  in  the  Pennsylvania  Telegraph  Company  v. 
Western  Union  Telegraph  Company  (96  U.  S.  9)  the 
court  pronounced  the  telegraph  'one  of  the  necessities  of 
commerce.  It  is  indisjjensible  as  a  means  of  intercom- 
munication, but  especially  so  in  commercial  transac- 
tions.' We  think  this  last  case  could  better  stand  on 
the  power  'to  establish  postoffices  and  postroads.'  Yet, 
if  put  on  the  commerce  clause,  like  Almy  v.  California, 
it  is  based  on  the  necessity  of  the  thing  legislated  upon 
to  foreign  or  interstate  or  Indian  commerce.  As  we  have 
said,  trademarks  are  not  necessary  to  such  commerce. 
But  even  if  they  were,  our  opinion  would  be  unchanged. 
In  the  case  of  Steffens,  quoted  above,  the  court  said: 

"  'It  is  not  every  species  of  property,  which  is  the  sub- 
ject of  commerce,  or  which  is  used  or  even  essential  in 
commerce,  which  is  brought  by  this  clause  of  the  Consti- 
tution (commerce  clause)  within  the  control  of  congress. 
The  barrels  and  casks,  the  bottles  and  boxes  in  which 


S20  HOPKINS   ON   TR.VDEMARKS.  [§  132 

alone  certain  articles  of  commerce  are  kept  for  safety, 
and  by  which  their  contents  are  transferred  from  the 
seller  to  the  buyer,  do  not  thereby  become  subjects  of 
congressional  legislation  more  than  other  property.' 

' '  But  while  we  think  congress  can  not  so  legislate  with 
regard  to  trademarks  under  the  power  'to  regulate  com- 
merce with  foreign  nations,  and  among  the  several  states 
and  with  the  Indian  tribes'  (article  1,  section  8,  consti- 
tution), trademarks,  in  commerce  with  foreign  nations 
and  with  the  Indian  tribes,  can  be  protected  under  the 
treaty-making  power. '  '^ ^ 

It  therefore  appears  that  the  Act  of  1881  was  passed 
on  the  theory  that  it  came  within  the  treaty-making  pow- 
ers of  congress.  The  present  act  cannot  be  sustained 
upon  that  theoiy;  it  must  he  sustained,  if  at  all,  as  a 
regulation  of  interstate  commerce. 

§  132.  The  advantages  of  registration.— The  local 
registration  statutes  of  the  several  states  are  too  numer- 
ous and  involved  to  be  treated  here.^^  The  federal  courts 
cannot  enforce  rights  created  by  state  registration,  at 
least  as  to  alleged  infringements  occurring  outside  the 
state  in  which  registration  was  had.^- 

As  to  federal  registration.  Judge  Hawley  has  said 
that  "registration  under  the  act  of  1881  is  of  but  little, 
if  any,  value,  except  for  the  purpose  of  creating  a  per- 
manent record  of  the  date  of  adoption  and  use  of  the 
trademark,  or  in  cases  where  it  is  necessary  to  give  jur- 
isdiction to  the  United  States  courts.  "^^  As  against 
a  citizen  of  the  same  state,  a  registrant  under  that  act 


10 — Con.    Record,    Vol.    10,    part  and  followed  in  Sleepy  Eye  Mill- 

2,  p.  1514.  ing   Co.    v.    C.    F.    Blanke   Tea   & 

11— See  Appendix  H.  Coffee  Co.,  85  Off.  Gaz.  1905.     To 

12 — Rehbein     v.      Weaver,     133  the    same    effect    see    Einstein    v. 

Fed.  Rep.  607.  Sawhill,   65   Off.   Gaz.   1918;    Sher- 

13 — Hennessy  v.  Braunschweiger  wood   v.   Horton,   Cato   &  Co.,    84 

&  Co.,  89  Fed.  Rep.  664-668.  Quoted  Off.  Gaz.  2018. 


132] 


REGISTRATION. 


321 


had  not  even  the  riglit  to  sue  in  a  court  of  the  United 
States,  unless  it  can  be  shown  that  both  the  original  and 
infringing  marks  are  being  used  in  commerce  with  for- 
eign nations  or  the  Indian  tribes.*'' 

The  certificate  of  registration  is  only  prima  facie  evi- 
dence of  ownership  of  the  trademark  registered,  and  is 
not  conclusive  or  binding  upon  the  courts  as  to  the  right 
of  a  party  to  its  exclusive  use.*'^ 

No  right  is  created  by  the  registration  of  a  generic 
name,**^  nor  by  the  registration  of  a  mark  unrestricted 
as  to  form  or  color,  as  "a  color  streak  applied  to  or 
woven  in  a  wire  rope."*^ 

The  certificate  of  registration  is  only  prima  facie  evi- 
dence of  an  admission  on  the  part  of  the  government 
that  the  applicant  for  registration  is  the  owner  of  a 
valid  trademark,  is  not  a  grant  of  any  right  or  privilege, 
and  does  not,  therefore,  conclude  a  third  party  ;*^  but  it 
is  conclusive  as  against  the  registrant,  as  limiting  and 


14— Ryder  v.  Holt.  128  U.  S. 
525;  Luyties  v.  Hollender,  22. 
Blatchf.  413;  Schumacher  v. 
Schwenke,  26  Fed.  Rep.  816; 
Gravely  v.  Gravely,  42  Fed.  Rep. 
265;  Prince's  Metallic  Paint  Co.  v. 
Prince  Mfg.  Co.,  53  Fed.  Rep.  493. 

15 — Hennessy  v.  Braunschwei- 
ger,  supra:  Brower  v.  Boulton,  53 
Fed.  Rep.  389;  Glen  Cove  Mfg.  Co. 
v.  Ludeling.  22  Fed.  Rep.  824-826. 

In  the  latter  case  Judge  Wal- 
lace observed:  "The  act  of  con- 
gress makes  the  registration  of 
the  mark  only  prima  facie  evi- 
dence of  ownership.  Sec.  7.  The 
inquiry  is  therefore  always  open 
as  to  the  validity  of  the  title  to 
a  trademark  evidenced  by  the  reg- 
istration. The  registration  could 
not  confer  a  title  to  the  trademark 
upon  the  complainant  if  some  oth- 


er corporation  or  individual  had 
acquired  a  prior  right  by  adoption 
and  use;  nor  could  it  vest  defend- 
ant with  a  title  as  against  the 
complainant's  common-law  title. 
In  this  view  the  only  office  of  a 
registration  is  to  confer  jurisdic- 
tion upon  the  court  to  protect  a 
trademark  when  the  proprietor 
has  obtained  the  statutory  evi- 
dence of  title,  and  the  only  func- 
tion of  the  commissioner  of  pat- 
ents is  to  determine  whether  an 
applicant  has  a  presumptive  right 
to  the  trademark." 

16 — Liebig's  Extract  of  Meat  Co. 
v.  Walker,  115  Fed.  Rep.  822-826. 

17 — A  Leschen  &  Sons  Rope  Co. 
V.  Broderick  &  Bascom  Rope  Co., 
134  Fed.  Rep.  571.  C.  C.  A. 

18— United  States  v.  Braun,  39 
Fed.  Rep.  775. 


21 


322  HOPKINS   ON   TRADEMARKS.  [§  133 

restricting  what  he  can  claim  as  bis  trademark.^ ^  Not- 
withstanding its  registration  under  the  act,  the  trade- 
mark of  an  insolvent  will  be  conveyed  by  a  general  as- 
signment for  the  benefit  of  creditors,-*'  and  it  has  been 
held  under  all  the  various  bankruptcy  and  insolvency 
laws  that  all  trademarks  of  the  bankrupt  or  insolvent 
pass  to  the  trustee  or  assignee.-^ 

§  133.  The  disadvantages  of  registration.— As  indi- 
cated in  the  preceding  section,  registration  under  the 
act  was  held  to  ''operate  as  evidence  tending  to  show 
what  was  really  claimed."^-  Judge  Acheson  has  said 
"it  would  be  a  per\^ersion  of  the  right  to  registration 
under  the  act  of  congress,  *  *  *  and  would  amount 
to  a  fraud  on  other  traders,  to  permit  the  plaintiff  now 
to  assert  broader  rights  in  the  anchor  as  a  trade  symbol 
than  his  public  registry  in  1885  disclosed.  *  *  *  Sec- 
tion 10  gives  no  countenance  to  the  idea  that  a  person, 
availing  himself  of  the  benefits  of  the  act,  may  register 
as  his  trademark  a  peculiar  re^jresentation  of  a  com- 
mon emblem,  exhibiting  special  and  distinguishing  fea- 
tures and  a  particular  combination,  and  yet  afterwards 
claim  the  emblem  pure  and  simple,  without  regard  to 
such  features  or  combination.  To  tolerate  this  would  be 
to  defeat  the  very  purpose  of  the  act."-^ 

In  a  later  case,  Judge  Adams  held  that  by  failing  to 
include  the  letter  S  as  part  of  a  registered  mark,  the 


19 — Kohler  Mfg.  Co.  v.  Beeshore  21 — Warren    v.    Warren    Thread 

(2),  59  Fed.  Rep.  572;    Richter  v.  Co.,    134     Mass.     247;     Wilmer    v. 

Reynolds,  59  Fed.  Rep.  577;     8  C.  Thomas,  74  Md.  485,  22  Atl.  Rep. 

C.    A,    220;     Adams   v.    Heisel,    31  403. 

Fed.  Rep.  279,  281;  Kohler  Mfg.  Co.  22— Shiras,    Circuit     Justice,    in 

V.  Beeshore  (1),  53  Fed.  Rep.  262,  Kohler  Mfg.  Co.  v.  Beeshore,  8  C. 

264;     Richter    v.    Anchor  Remedy  C.  A.  215,  59  Fed.  Rep.  572,  576. 

Co.,  52  Fed.  Rep,  455;    Pittsburgh  23 — Richter    v.    Anchor  Remedy 

Crushed  Steel  Co.  v.  Diamond  Steel  Co.,  52  Fed.  Rep.  455,  458;  affirmed 

Co.,  85  Fed.  Rep.  637.  under  the  style  of  Richter  v.  Rey- 

20— Sarrazin  v.  W.  R.  Irby  Cigar  nolds,  8  C.  C.  A,  220,  59  Fed.  Rep. 

Co.,  93  Fed.  Rep.  624.  577. 


§  133]  REGISTRATION.  323 

registrant  ''must  be  held  tjD  have  abandoned  this  feature 
of  its  mark,  if  it  had  ever  employed  it,  to  the  public,  and 
thereby,  to  have  disclaimed  any  exclusive  right  to  it;"-* 
and  a  similar  ruling  has  been  made  by  the  Court  of  Ap- 
peals of  Kentucky.-^  Judge  Iveed  has  very  proi^erly  held 
that  where  certain  parts  of  the  mark  shown  and  de- 
scribed in  a  registration  are  recited  to  be  essential,  the 
other  parts  will  be  held  not  to  be  part  of  the  trademark.^^ 
It  is  consequently  well  established  that  registry  of  less 
than  the  whole  trademark  is  tantamount  to  an  abandon- 
ment of  the  remainder.2^ 

By  §  28  of  the  Act  of  1905  it  is  provided,  "That  it 
shall  be  the  duty  of  the  registrant  to  give  notice  to  the 
public  that  a  trademark  is  registered,  either  by  affixing 
thereon  the  words  "Registered  in  U.  S.  Patent  Office," 
or  abbreviated  thus,  "Eeg.  U.  S.  Pat.  Off.,"  or  when, 
from  the  character  or  size  of  the  trademark,  or  from  its 
manner  of  attachment  to  the  article  to  which  it  is  appro- 
priated, this  cannot  be  done,  then  by  affixing  a  label  con- 
taining a  like  notice  to  the  package  or  receptacle  wherein 
the  article  or  articles  are  inclosed;  and  in  any  suit  for 
infringement  by  a  party  failing  so  to  give  notice  of  reg- 
istration no  damages  shall  be  recovered,  except  on  proof 
that  the  defendant  was  duly  notified  of  infringement,  and 
continued  the  same  after  such  notice." 

This  section  is  directly  modeled  uix)n  the  correspond- 
ing section  of  the  patent  statutes,  which  is  as  follows : 

§  4900.  "It  shall  be  the  duty  of  all  patentees,  and 
their  assigns  and  legal  representatives,  and  of  all  i:>er- 
sons  making  or  vending  any  patented  article  for  or  un- 
der them,  to  give  sufficient  notice  to  the  public  that  the 
same  is  patented ;  either  bj^  fixing  thereon  tlie  word '  *  pat- 

24— Pittsburg  Crushed  Steel  Co.  26— L.  H.  Harris    Drug    Co.    v. 

V.  Diamond  Steel  Co.,  85  Fed.  Rep.  Stucky,  46  Fed.  Rep.  624.  625. 

637,  638.  27— P.    C.    Weist    Co.    v.    Weeks, 

25_Geo.  T.  Stagg  Co.  v.  Taylor,  177  Pa.  412,  35  Atl.  Rep.  693. 
95  Ky.  651,  27  S.  W^  Rep.  247. 


324  HOPKINS   ON    TRADEMARKS.  [§  134 

ented,"  together  with  the  day  and  year  the  patent  was 
granted ;  or  when,  from  the  character  of  the  article,  this 
cannot  be  done,  by  fixing  to  it,  or  to  the  package  where- 
in one  or  more  of  them  is  inclosed,  a  label  containing 
the  like  notice;  and  in  any  suit  for  infringement,  by  the 
party  failing  so  to  mark,  no  damages  shall  be  recovered 
by 'the  plaintiff,  except  on  proof  that  the  defendant  was 
duly  notified  of  the  infringement,  and  continued,  after 
such  notice,  to  make,  use,  or  vend  the  article  so  pat- 
ented." 

Under  the  latter  section,  Mr.  Justice  Gray  has  said 
''one  of  these  two  things,  marking  the  articles,  or  notice 
to  the  infringers,  is  made  by  the  statute  a  prerequisite 
to  the  patentee's  right  to  recover  damages  against  them. 

Each  is  an  affinnative  fact,  and  is  something  to  be 
done  by  him.  *  *  *  By  the  elementary  principles  of 
pleading,  therefore,  the  duty  of  alleging,  and  the  burden 
of  proving  either  of  these  facts  is  upon  the  plaintiff,  "^s 

Therefore,  by  registration  under  the  Act  of  1905,  the 
registrant  has  this  burden  imposed  upon  him. 

§  134.  Interferences.— The  rules  established  by  the  de- 
cisions of  the  patent  office  in  relation  to  interferences  un- 
der the  Act  of  1881  are  of  value  in  like  proceedings  un- 
der the  present  Act.  Section  3  of  the  Act  of  1881  pro- 
vided that  'Tn  an  application  for  registration  the  com- 
missioner of  patents  shall  decide  the  presumptive  law- 
fulness of  claim  to  the  alleged  trademark;  and  in  any 
dispute  between  an  applicant  and  a  previous  registrant, 
or  between  applicants,  he  shall  follow,  so  far  as  the 
same  may  be  applicable,  the  practice  of  courts  of  equity 
of  the  United  States  in  analogous  cases." 

§  135.  Between  a  registrant  and  an  applicant,  the 
burden  of  proof  is  on  the  applicant,  for  the  reason  that 
the  certificate  under  §  7  of  the  act  is  prima  facie  evidence 

28— Dunlap  v.   Schofield,  152  U.  S.   244,  248,  38  L.  Ed.  426,  427. 


§  136]  REGISTRATION.  325 

of  ownership.2^  jjj  su^j^j  ^  case,  Allen,  commissioner, 
has  held  that  the  applicant  must  establish  "a  date  of 
use  in  the  United  States  prior  to  the  date  of  the  other 
party's  registration,"''^  and  that  registration  by  the  ap- 
plicant under  the  Act  of  1870  "amounts  to  nothing  more 
than  a  publication."-'^ 

§  136.  The  preliminary  statement.— In  patent  inter- 
ferences a  formal  preliminary  statement  is  required  from 
each  of  the  parties.  In  trademark  interferences  the 
statement  accompanying  the  application  for  registration 
performs  the  same  functions  and  is  treated  as  a  prelim- 
inary statement. 

The  rule  of  the  patent  office  in  relation  thereto  for- 
merly provided  that  each  applicant  and  registrant  would 
be  held  to  the  date  of  adoption  alleged  in  the  statement 
filed  with  his  application.  But  even  under  that  rule 
Duell,  commissioner,  held  that  evidence  of  use  antedat- 
ing that  set  up  in  the  application  of  the  party  offering 
it  may  be  considered  and  such  weight  given  to  it  as  "may 
be  proper  under  the  circumstances  of  the  case."^^ 
Subsequently,  on  an  application  for  leave  to  file  an 
amended  statement,  Allen,  commissioner,  in  denying  the 
application  held  that  an  amendment  could  be  filed  after 
the  determination  of  the  question  of  priority .'' 

Manifestly,  however,  evidence  offered  to  prove  a  date 
earlier  than  that  set  up  in  the  statement  must  be  re- 
garded with  some  suspicion.  In  the  language  of  Allen, 
commissioner,  "it  is  to  be  presmned  that  this  statement 
filed  with  the  application  for  registration  was  made  after 
proper  inquiry,  and  while  it  is  not  binding  upon  the  par- 

29 — Sherwood  v.  Horton.  Cato  &  31 — Auerbach  &  Sons  v.  Hall  & 

Co.,  84  Off.  Gaz.  2019;    Sibley  Soap  Hayward  Co.,  Ill  Off.  Ga«.  806. 

Co.  V.  Lambert  Pharmacal  Co.,  103  32 — Manitowoc  Mfg.  Co.  v.  Dick- 

Off.  Gaz.  2172.  erman,  57  Off.  Gaz.  1721. 

30 — Broderick  &  Bascom  Rope  33— ^'^anden  Bergh  &  Co.  v.  Bel- 
Co.  V.  A.  Leschen  &  Sons  Rope  Co.,  mont  Distilling  Co.,  99  Off.  Gaz. 
100  Off.  Gaz.  3011.  1624. 


326  HOPKINS   ON   TRADEMARKS.  [§  137 

ties  to  an  interference  proceeding  it  is  still  entitled  to 
considerable  weight/^^ 

§  137.  The  issues  in  an  interference.— The  purpose  of 
an  interference  is  to  determine  the  question  of  priority 
of  adoption  and  use  as  between  the  parties  to  the  inter- 
ference. Evidence  of  prior  use  by  a  stranger  to  the 
interference  will  not  be  considered.^^ 

An  interference  in  fact  exists  where  the  marks  are  so 
similar  as  to  be  calculated  to  deceive  the  public,  and  are 
used  upon  classes  of  goods  so  closely  related  that  when 
bearing  the  same  mark  one  would  suppose  that  they  are 
the  product  of  the  same  manufacturer.^^ 

34— Ibid.  36— B.  A.  Corbin  &  Son  v.  Mil- 

35 — Carey  v.  New  Home  Sewing  ler,  Kohlhepp,  Griese  &  Co.,  98  Off. 
Machine  Co.,  101  Off.  Gaz.  448.  Gaz.  1485. 


CHAPTER  X. 

COURTS.  PARTIES  AND  CAUSES. 

§  138.  Introductory.— In  the  preceding  chapters  we 
have  discussed  the  rights  of  owners  or  assignees  of 
trademarks,  and  the  wrongs  occurring  when  these  rights 
are  infringed,  or,  as  against  persons  not  the  owners  of 
technical  trademarks,  other  methods  of  unfair  competi- 
tion are  resorted  to.  The  remainder  of  this  work  will 
deal  with  the  means  by  whicli  infringers  are  restrained 
from  a  continuance  of  their  wrongdoing  and  forced  to 
make  reparation  for  the  damage  they  have  occasioned. 
In  this  chapter  we  will  confine  our  attention  to  the  courts 
whose  power  may  be  invoked,  the  jDarties  who  may  seek 
a  remedy  or  against  whom  it  may  be  sought,  and  the 
causes  of  action  which  may  properly  be  brought  to  de- 
termine the  rights  of  both  parties. 

§  139.    Jurisdiction  of  United  States  circuit  courts.— 

Section  7  of  the  Act  of  1881  provides  that  courts  of  the 
United  States  shall  have  original  and  api^ellate  jurisdic- 
tion in  cases  involving  a  registered  trademark,  without 
regard  to  the  amount  in  controversy.  It  has  been  held 
in  this  connection  (prior  to  the  statutes  of  1887  and  1888, 
which  raised  the  "amount  in  controversy"  necessary 
to  federal  jurisdiction  from  $500  to  $2,000)  that  the  fed- 
eral courts  were  not  limited  in  their  trademark  jurisdic- 
tion to  cases  in  which  the  defendant's  profits  had  exceed- 
ed five  hundred  dollars.*  And  a  later  decision  has  held 
that  ''The  statute  of  1881,  which  gives  them  {i.  e.,  own- 
ers of  registered  trademarks)  the  right  to  commence  a 
suit  without  alleging  the  amount  in  controversy,  was  not 

1 — Symonus  v.  Greene,   28  Fed.  Rep.  834. 

327 


328  HOPKINS   ON   TRADEMARKS.  [§  139 

repealed  by  the  statutes  of  1887  and  1888,  which  make  it 
necessary,  in  order  to  give  jurisdiction  to  the  United 
States  Circuit  Court,  that  the  amount  involved  be  two 
thousand  dollars."- 

In  cases  where  there  is  diverse  citizenship  it  does  not 
appear  to  be  necessary  to  allege  that  the  plaintiff  uses 
his  trademark  on  goods  intended  for  commerce  with 
foreign  nations  or  with  the  Indian  tribes ;  but  it  has  been 
held  that  the  federal  courts  have  no  jurisdiction  in  a 
trademark  action  between  citizens  of  the  same  state  un- 
less the  pleadings  affirmatively  show  that  the  complain- 
ant uses  his  trademark  on  goods  intended  for  commerce 
with  foreign  nations  or  with  the  Indian  tribes.^  It  was 
necessary,  under  the  Act  of  1881,  where  both  parties  are 
citizens  of  the  same  state,  to  aver  that  the  defendant  has 
applied  the  simulated  mark  to  goods  intended  to  be  used 
in  such  foreign  commerce,  or  trade  with  the  Indian 
tribes,"*  although  the  reasoning  of  one  of  the  cases  tended 
to  show  that  logically  no  such  averment  in  the  plead- 
ings is  necessary.^  It  is  not  necessary  to  show  that 
either  party  has  used  the  mark  in  commerce  with  for- 
eign nations  or  with  the  Indian  tribes  where  the  par- 
ties are  of  diverse  citizenship.® 

Of  course,  in  cases  involving  the  right  to  an  unregis- 
tered trademark,  jurisdiction  can  only  be  acquired  by 
the  federal  courts  because  of  the  diverse  citizenship  of 
the  parties,'^  and  the  amount  in  controversy,  which  must 

2— Glotin  V.  Oswald,  65  Fed.  Rep.  Gaz.  1538;  42  Fed,  Rep.  265;  War- 

151;     Garland  &  Ralston,   Federal  ner  v.  Searle  &  Hereth  Co.,  191  U. 

Practice,     sec.    122;     Hennessy    v.  S.  195. 
Herrmann,  89  Fed.  Rep.  669.  5— Glen  Cove  Mfg.  Co.  v.  Ludel- 

3— Ryder  v.  Holt,  128  U.  S.  525;  ing,  22  Fed.  Rep.  823. 
Glen  Cove  Mfg.  Co.  v.  Ludeling,  22        6 — Hennessy  v.   Braunschweiger 

Fed.  Rep.  823;    Gravely  v.  Gravely,  &  Co.,  89  Fed.  Rep.  664. 
52   Off.    Gaz.    1538;     42   Fed.   Rep.         7— Battle  v.  Finlay,  50  Fed.  Rep. 

265;    Schumacher  v.  Schwenke,  26  106;    Burt  v.  Smith.  71  Fed.  Rep. 

Fed.  Rep.  818;    Luyties  v.  Hollen-  161;    Prince's  Metallic  Paint  Co.  v. 

der,  27  Blatchf.  413.  Prince  Mfg.  Co.,  53  Fed.  Rep.  493. 

4 — Gravely  v.  Gravely,    52    Off. 


§  139]  COURTS,    PARTIES   AND    CAUSES.  329 

be  over  $2,000  exclusive  of  interest  and  costs ;  as  to  trade- 
marks, their  jurisdiction  is  concurrent  with  that  of  the 
state  courts.  By  virtue  of  the  act  of  congress  of  March 
3,  1887,  ch.  373,  as  corrected  by  the  act  of  August  13, 
1888,  ch.  8GG,  suit  cannot  be  brought  against  a  corpora- 
tion for  infringement  of  a  trademark  except  in  the  dis- 
trict where  it  is  incorporated.** 

Where  a  bill  was  brought  to  restrain  infringement  of 
a  registered  trademark  and  to  restrain  the  defendants 
from  unfair  competition  in  simulating  the  fonn,  size, 
color  and  shape  of  cough-drops  manufactured  by  the 
complainants  (both  parties  being  citizens  of  the  same 
state),  the  United  States  Circuit  Court  of  Appeals  for 
the  Second  Circuit  held  that  the  fact  that  the  trademark 
had  not  been  infringed  deprived  the  circuit  court  of  jur- 
isdiction, and  that  court  had  therefore  erred  in  granting 
an  injunction  to  restrain  the  unfair  competition  com- 
plained of.° 

In  a  suit  for  injunction  the  "amount  in  controversy" 
is  the  value  of  the  object  to  be  gained  by  the  bill,  and 
not  the  amount  of  damages  already  suffered  by  the  com- 
plainant.^*^ In  actions  for  infringement  of  trademark  or 
for  unfair  competition,  therefore,  the  amount  of  profits 
sought  to  be  recovered  does  not  determine  this  jurisdic- 
tional question.  In  trademark  cases  it  is  the  value  of 
the  trademark  that  determines  and  fixes  the  ''amount  in 
controversy."^^ 

In  a  suit  for  the  protection  of  a  tradename,  not  a 
trademark,  from  unfair  competition,  ''it  is  the  value  of 

8 — Re  Keasbey   &    Mattison  Co.,  ed.),  sec.  16.    Citing  Mississippi  & 

160  U.  S.  221 ;    Garland  &  Ralston,  Mo.   R.   R.   Co.  v.   Ward,   2   Black, 

Federal  Practice,  sec.  161.  485;     Market  Co.  v.   Hoffman,  101 

9— Burt  V.  Smith,  71  Fed.  Rep.  U.  S.  112;    Symonds  v.  Greene,  28 
161.    To  the  same  effect  see  Gold-  Fed.  Rep.  834;    WTiitman  v.  Hub- 
stein  V.  Whelan,  62  Fed.  Rep.  124;  bell,  30  Fed.  Rep.  81. 
Luyties  v.  Hollender,  30  Fed.  Rep.  11— Symonds  v.  Greene,  28  Fed. 
632.  Rep.  834:     Hennessy  v.   Hermann, 

10— Foster,  Federal  Practice  (2d  89  Fed.  Rep.  669. 


330  HOPKINS   ON   TRADEMARKS.  [§  139 

that  name,  as  measured  by  the  damages  to  it,  not  only 
present  but  prospective,  which  determines  the  amount 
in  controversy.  "^- 

This  must  be  specifically  pleaded,  because  "the  requi- 
site value  of  the  matter  in  controversy  is  a  jurisdictional 
fact,  and  it  must  necessarily  be  averred  in  the  declara- 
tion or  bill.  There  are  no  presumptions  in  favor  of 
the  jurisdiction  of  the  federal  courts,  as  they  are  spec- 
ially constituted  with  jurisdiction  in  certain  cases;  and 
the  facts  upon  which  it  rests  must  appear  in  some  form 
in  the  record  of  all  suits  prosecuted  before  them.    They 

have  no  jurisdiction  except  such  as  the  statute  con- 
fers. "^^ 

Thus  where  a  tradename  (not  a  technical  trademark)  is 
alleged  to  be  of  a  certain  value,  but  there  is  no  averment 
that  the  defendant's  acts  will,  unless  restrained,  tend 
to  destroy  it  or  put  its  value  in  jeopardy,  the  bill  is  de- 
murrable.^^ 

When  the  parties  are  citizens  of  different  states,  so 
that  the  case  comes  within  the  general  grant  of  jurisdic- 
tion in  the  first  part  of  the  act  of  March  3,  1887,  the  de- 
fendant, by  entering  a  general  appearance  in  a  suit 
brought  against  him  in  a  district  of  which  he  is  not  an 

12 — Archibald,    J.,    in  Draper  v.  uct,  'to  the  great  loss,  injury  and 

Skerrett    (2),   116   Fed.   Rep.   206,  damage'  of  complainant,  and  that 

207.  unless  such  acts  of  defendant  are 

13 — Garland  &  Ralston,  Federal  checked     'the     reputation    of    the 

Practice,  sec.  122.  complainant    and    its    rifles    will 

14 — "The  durmurrer  raises  also  a  still    further    suffer  great  and   ir- 

question  of  jurisdiction.     The  bill  reparable  damage.'      There    is    no 

alleges   that    complainant's   trade-  averment  that  complainant's  trade 

name,   'Winchester/   is    worth    in  name  will  be  destroyed,  nor  that  it 

excess    of    $5,000,    but    makes  no  is  in  jeopardy.     The  court  cannot 

charge  as  to  the  amount  of  present  assume,  in  the  absence  of  allega- 

or    prospective     damage    to    com-  tions  to  that  effect,  that  the  trade- 

plainant  arising  out  of  defendant's  name  will  be  destroyed,    or    that 

action,    excepting    the    statements  complainant's  damages  are  in  ex- 

that  defendant's  acts  are  calculated  cess   of   $2,000."  Kohlsaat,    J.,    in 

to   deceive  and   mislead  intending  Winchester  Repeating  Arms  Co.  v. 

purchasers  of  complainant's  prod-  Butler  Bros.,  128  Fed.  Rep.  976. 


§  140J  COURTS,    PARTIES    AND    CAUSES.  331 

inhabitant,  waives  the  right  to  object  tliat  it  is  brought 
in  the  wrong  district.^^  But  a  corporation,  by  doing 
business  or  appointing  a  general  agent  in  a  district  otlier 
than  that  in  which  it  is  created,  does  not  waive  its  right, 
if  seasonably  availed  of,  to  insist  that  the  suit  should 
have  been  brought  in  the  latter  district.'" 

The  Court  of  Appeals  of  the  district  of  Columbia  had 
no  jurisdiction  of  trademark  cases  under  section  3  of 
the  law  of  1881. '^ 

Federal  jurisdiction  in  cases  of  unfair  competition 
must  of  course  be  predicated  upon  the  general  rules  fix- 
ing the  jurisdiction  of  the  federal  courts,  so  that  those 
courts  cannot  entertain  such  an  action  arising  between 
citizens  of  the  same  state  except  in  so  far  as  the  res})ond- 
ent's  wrongful  acts  affect  commerce  with  foreign  nations 
or  the  Indian  tribes ;  at  least  that  is  the  express  holding 
of  the  circuit  court  of  appeals  for  the  seventh  circuit.^** 

§140.  Jurisdiction  of  the  state  courts.— The  state 
courts  have  a  jurisdiction  concurrent  with  that  of  the 
federal  courts  in  trademark  cases.^**  It  may,  at  times, 
be  advisable  for  a  non-resident  plaintiff  who  has  secured 
state  registration  for  his  mark  or  label  to  sue  in  the  state 
court  in  preference  to  the  federal  court;  this  will  be  de- 
termined by  the  character  of  the  matter  for  which  state 

15— Re  Keasbey  &  Mattison  Co.,  Elgin  Nat.  Watch  Co.,  94  Fed.  Rep. 

160  U.  S.  221-229.  667,  672,  35  C.  C.  A.  237. 

16 — Re  Keasbey  &  Mattison  Co.,        19 — Small  v.   Sanders,   118    Ind. 

160   U.    S.   221-229.     This   reverses  105,  20  N.  E.  Rep.  296.     It  is  well 

the  ruling  in  Gray  v.  Taper-Sleeve  settled  law  that  the  jurisdiction  of 

Pulley  Works,  16    Fed.    Rep.  436-  state  and  federal  courts  over  suits 

443,   where  it   was   held   that   the  for  infringement  of  trademarks  is 

service   of  an  agent  of  a   foreign  concurrent.     The  act  of  March  3, 

corporation  was    binding,    the    in-  1881,  conferring  jurisdiction  upon 

fringement    having     been     perpe-  the  courts  of  the  United  States,  in 

trated  in  the  district  where  the  ac-  no  way  impaired   the  jurisdiction 

tion  was  instituted.  of  the  state  courts.     Re  Keasbey  & 

17— Einstein  v.  Sawhill,  65  Off.  Mattison  Co.,  160  U.  S.  221;    Reed- 

Gaz.  1918.  er  v.  Brodt,   (C.  P.)   4  Ohio  N.  P. 

18— Illinois  Watch   Case    Co.    v.  265;    6  Ohio  Dec.  248. 


332  HOPKINS   ON    TRADEMARKS.  [§  141 

registration  has  been  secured.  Several  of  the  states  have 
by  statute  extended  the  definition  of  trademark  to  in- 
clude tickets,  labels,  wrappers,  and  other  wrappings  or 
packages  not  properly  trademark,  and  frequently  it  will 
be  a  benefit  to  a  complainant  to  avail  himself  of  such 
statutoiy  provisions.^^  The  courts  of  every  state  of  the 
Union  have,  with  the  exception  of  California,-^  always 
been  open  to  the  owners  of  trademarks  seeking  redress 
and  protection  against  piracy,  without  requiring  state 
registration  as  a  prerequisite. 

§  141.  The  elements  whereon  jurisdiction  must  be 
predicated. — Lord  Chancellor  Brady,  in  the  Irish  high 
<»drt  of  chancery,  in  1893,  speaking  of  trademark  causes, 
said:  ''In  such  suits,  in  order  to  found  the  jurisdiction 
of  this  court,  there  must  be  established,  first,  the  exist- 
ence of  the  trademark;  next,  the  fact  of  an  imitation, 
whether  a  direct  imitation,  or  one  with  such  variations 
that  the  court  must  regard  them  as  merely  colorable ;  and 
thirdly,  the  fact  that  the  imitations  were  made  without 
license,  or  anything  that  this  court  could  regard  as  ac- 
quiescence in  their  use."^^  Mr.  Sebastian  refers  to  the 
remark  of  Vice  Chancellor  Bacon,  in  England,  that  'Hhe 
law  of  Scotland  does  not  in  this  respect  differ  from  the 
law  of  England "^^  (referring  to  trademarks),  as  estab- 
lishing,  in  conjunction  with  the    above    dicta    of    the 

20 — "The   phrase    trademark   as  name  for  any  mill,  hotel,  factory 

used  in  this  chapter  includes  every  or  other  business."    Sec.  366,  Penal 

description  of  word,  letter,  device.  Code  of  New  York,  1893;  Montana 

emblem,    stamp,    imprint,    brand.  Code,  1895,  vol.  I,  sec.  3160. 

printed   ticket,    label    or    wrapper  21 — Whittier  v.  Dietz,  66  Cal.  78. 

usually  affixed    by    any  mechanic.  This  exception    to    the    rule    has 

manufacturer,  druggist,    merchant  since  been  removed    by    statutory 

or  tradesman,  to  denote  any  goods  enactment. 

to  be  imported,  manufactured,  pro-  22 — Kinahan  v.  Bolton,  15  Ir.  Ch. 

duced,  compounded  or  sold  by  him,  75-79.    See  also  Thedford  Medicine 

other  than  any  name,  word  or  ex-  Co.  v.  Curry,  96  Ga.  89. 

pression    generally    denoting   any  23 — Singer  Mfg.  Co.  v.  Loog  (3), 

goods  of  some  particular  class  or  L.  R.  18  Ch.  D.  395-404. 
description   or  the  designation   or 


8  141]  COURTS,    PARTIES   AND    CAUSES.  333 

learned  Irish  chancellor,  the  fact  that  the  jurisdictional 
I^rinciples  in  the  three  kingdoms  are  the  same.-''  The  su- 
preme court  of  New  York  lias  held  it  error  to  dismiss  a 
complaint  upon  the  pleadings  and  the  opening  of  counsel 
where  the  complaint  showed  the  ownership  of  a  tobac- 
co sample  ticket  used  in  trade  by  the  plaintiffs,  and  the 
wrongful  use  of  an  imitation  thereof  by  the  defendants.-'^ 
For  reasons  discussed  elsewhere,  it  is  not  necessarj^  to 
confer  jurisdiction  that  it  be  alleged  that  any  one  has 
in  fact  been  misled  or  deceived  by  the  use  of  the  sinm- 
lated  mark.  But  the  pleadings  must  be  drawn  to  suit  the 
exigencies  of  the  case;  and  where  the  facts  plainly 
showed  that  the  simulated  mark  did  not  and  could  not 
deceive  either  the  jobber  or  retailer,  and  the  fraud,  if 
any,  was  upon  the  ultimate  purchaser,  the  consumer,  it 
was  proper  to  aver  the  fact  that  the  infringement  was 
calculated  to  deceive  the  consumer,^^  and  it  is  probably 
always  a  better  course  to  aver  that  the  imitation  is  cal- 
culated to  deceive  the  ultimate  purchaser. 

The  real  and  simulated  marks  should  be  submitted 
with  the  bill  of  complaint  or  accurately  described  in  ap- 
propriate terms,  the  main  test  of  the  alleged  resem- 
blance being  inspection  by  the  court  ;-^  with  the  qualifica- 
tion that  the  resemblance  need  not  be  such  as  to  deceive 
persons  seeing  the  two  marks  side  by  side.^® 


24— Sebastian,   Trademarks  (4th     be    deceived."      Citing    Sykes    v. 

ed.),  170.  Sykes,  3  B.  &  Cr.  541;    Farina  v. 

25— Linde  v.  Bensel,  22  Hun  (29     Silverlock,  1  K.  &  J.  509;   Rose  v. 

N    Y.  Sup.  Ct).  601.  Loftus,   47   L.   J.   Ch.   576;    Singer 

Mfg.   Co.   V.   Loog    (3),   18   Ch.   D. 
395-412. 


26 — Drummond    Tobacco    Co.    v. 
Tinsley  Tobacco  Co.,  52  Mo.  App. 

10,  25.  The  court  adds:     "The  con-  27— Drummond    Tobacco    Co.    v. 

sumer  of  the  particular  article  is  Tinsley  Tobacco  Co.,  52  Mo.  App. 

to  be  considered  almost  exclusively  ^0,  26.                             , 

in  determining  the  question  of  in-  28— McCann  v.  Anthony,  21  Mo. 

fringement,  because,  in  the  case  of  App.  83;    Drummond  Tobacco  Co. 

an  attempted  decception,  he  is  sub-  v.  Tinsley  Tobacco  Co.,  52  Mo.  App. 

stantially  the  only  party  likely  to  10. 


334  HOPKINS   ON    TRADEMARKS.  [§  142 

§  142.  The  parties  plaintiff.— The  action  to  protect  a 
trademark  may  be  brought  by  its  owner  or  a  licensee.^® 
Trusts,  constructive,  implied  or  expressed,  may  arise,^*^ 
in  which  case  the  name  of  the  trustee  would  be  neces- 
sary in  all  suits  at  law  affecting  the  legal  title  to  the 
trademark,  and  it  would  be  his  duty  at  all  times  to  pro- 
tect and  defend  the  title  or  allow  his  name  to  be  used 
for  that  purpose,  under  the  established  principles  of  law 
affecting  trusts.^^ 

It  is  not  necessary  that  all  the  parties  having  an  in- 
terest in  a  trademark  join  as  parties  plaintiff.  Thus, 
Vice  Chancellor  Shadwell  held  that  surviving  partners 
could  maintain  an  action  for  an  infringement  of  the 
firm's  trademarks,  notwithstanding  the  fact  that  the  per- 
sonal representatives  of  a  deceased  partner  might  have 
some  interest  in  them.^^ 

Parties  having  distinct  interests  in  the  devices  embod- 
ied in  an  infringing  label  may  join  as  complainants  in 
equity.^^ 

Individuals  and  corporations  having  a  common  interest 
may  join  as  parties  complainant  in  a  bill  in  equity  to  re- 
strain an  unfair  competition  in  trade.  Thus  in  a  recent 
case  we  find  seven  corporations  located  in  the  city  of 
Minneapolis  joined  in  a  bill  to  restrain  the  fraudulent 
use  of  names  peculiar  to  their  business  and  locality,  by 

29— Kidd  V.   Johnson,   100  U.   S.  Webster    v.    Ketcham,     39    N.    Y. 

617;    Kidd  v.  Mills,  5  Off.  Gaz.  337.  Sup.  Ct.    54.     Compare    Ex    parte 

Where     there      is     an     exclusive  Lawrence  Bros.,  44  L.  T,  N.  S.  98; 

licensee  he  must  be  made  a  party,  29  W.  R.  392;    Re  Rust,  29  W.  R. 

or  no  injunction  can  issue.     Wal-  393;    Re  Farina,  29  W.  R.  391.  The 

lach  V.  Wigmore,  87  Fed.  Rep.  469.  three  cases  last  named  are  cases  in 

30 — Re  Mitchell,  L.  R.  28  Ch.  D.  which    one    partner     registered    a 

666.     Thus  where    the    use    of    a  mark  in  his  own  name  by  mistake, 

trademark  is  improperly  obtained  31 — Perry,  Trusts  (4th  ed.),  sec. 

by  one   member  of  a  partnership  520. 

for  his  own  use,  he  being  bound  32 — Hine  v.   Lart,   10   Jur.   106; 

to   obtain   it   for   the   partnership,  Seb.  80. 

he  is  held  to  be  the  trustee  of  the  33 — Jewish  Colonization  Assn.  v. 

mark  for  the  benefit  of  the  firm.  Solomon,  125  Fed.  Rep.  994,  995. 


§  142]  COURTS,    PARTIES    AND    CAUSES.  335 

a  dealer  in  Chicago,'^*  and  the  owners  of  two  separate 
**Blue  Lick  Water"  springs  in  Iventucky  joined  in  a  bill 
to  restrain  the  use  of  the  words  "Blue  Lick  Water"  by 
a  third  party  who  had  no- right  to  their  use.'*''  During 
the  period  of  administration  the  ])ersonal  representative 
of  the  deceased  owner  of  a  trademark  holds  the  mark, 
as  we  have  seen,  although  it  has  been  held  in  one  case 
that  it  may  pass  without  administration.'''^  Where  there 
is  an  administrator,  it  is  his  duty  to  defend  the  trade- 
mark from  infringement,  and  he  can  recover  all  accrued 
profits  and  damages  from  the  infringer,  as  actions  to 
restrain  infringement  and  recover  profits  and  damages 
are  held  not  to  come  within  the  rule  actio  personalis  mor- 
itur  cum  persona?'^  The  owner  of  real  estate  and  im- 
provements thereon  may  have  such  a  right  in  a  trade- 
mark used  to  identify  the  products  of  his  tenants  as  to 
entitle  him  to  prevent  his  tenants  from  using  the  mark 
after  they  have  removed  to  other  premises.^* 

Upon  the  dissolution  of  a  copartnership,  ''either  mem- 
ber may  use  the  devices  or  symbols,  unless  he  has  di- 
vested himself  of  the  right.  "-^'-^ 

Where  copartners  dissolve  partnership,  each  retaining 

34— Pillsbury  -  Washburn    Flour  36— Pratt's   Appeal,   117   Pa.   St. 

Mills  Co.  V.  Eagle,  30  C.  C.  A.  386,  401.     See  Stewart  v.  Einstein,  64 

86  Fed.  Rep.  608.     See  also  Gravel  Off.   Gaz.    1533. 

Roofers'  Exchange  v,  Turnbull,  64  37— Woerner,        Administration, 

Off.  Gaz.  441.  sec.   299;     Oakey  v.   Dalton,  L.  R. 

35— Northcutt  V.  Turney,  101  Ky.  35  Ch.  D.  700;  35  W^  R.  709; 
314;  41  S.  W.  Rep.  21.  See  also  Hatchard  v.  Mege,  L.  R.  18  Q.  B. 
Society  of  Accountants  v.  Corpora-  D.  771;  Giblett  v.  Read,  9  Mod. 
tion  of  Accountants,  20  Scot.  Sess.  459;  Croft  v.  Day,  7  Beav.  84. 
Cas.  (4th  ser.),  750,  in  which  three  38— Atlantic  Milling  Co.  v.  Rob- 
chartered  societies  joined  in  an  inson,  20  Fed.  Rep.  217;  Arm- 
action  to  prevent  the  use  of  the  strong  v.  Kleinhaus,  82  Ky.  803; 
letters  "C.  A."  (Chartered  Ac-  Harper  v.  Pearson,  3  L.  T.  N.  S. 
countants)  by  the  defendant,  those  547;  Carmichael  v.  Latimer,  11  R. 
letters  having  been  used  only  to  1.395;  Motley  v.  Downman,  3  My. 
designate  members  of  the  three  &  Cr.  1;  Dickson  v.  McMaster,  18 
complaining  societies.  See  also  Ir.  Jur.  202. 
Pratt's  Appeal,  117  Pa.  St.,  401.  39— Patterson,  J.,  in  Baldwin  v. 


336  HOPKINS   ON    TRADEMARKS.  [§  143 

the  right  to  use  tlie  trademarks  of  the  firm,  each  can 
assert  his  right  to  the  exclusive  use  of  such  trademarks 
as  to  all  persons  except  his  associates  in  ownership.*** 
But  in  all  cases  where  the  right  to  a  trademark  is  vested 
severallj^  in  two  or  more  persons,  either  of  them  will  be 
enjoined  from  advertising  or  claiming  that  he  is  the 
''sole  proprietor,"*^  or  that  his  is  the  ''only  genuine" 
article.*-  And  where  title  is  so  held,  either  of  the  par- 
ties entitled  to  its  use  may  alone  maintain  a  suit  in 
equity  against  an  infringer.*^ 

§  143.  The  parties  defendant.— We  have  seen  in  a 
previous  chajjter  that  the  liability  for  injunction  against 
infringement  extends  to  the  manufacturer  of  dies  from 
which  counterfeits  of  the  mark  are  to  be  made;  and  it 
may  accurately  be  said  that  every  one  who  deals  with 
the  simulated  trademark  or  the  means  of  producing  it 
will  be  restrained  in  equity. 

In  a  case  where  a  temporary  injunction  had  been 
granted  against  a  person  since  deceased,  without  oppo- 
sition, and  the  defendant  in  his  life-time  had  never 
moved  to  vacate  it,  it  was  held  in  New  York  that  the 
cause  would  not  be  continued  as  against  the  administra- 
trix of  the  defendant,  because  it  was  not  shown  that  the 
defendant  had  acquired  any  rights  in  the  litigation  or 
that  any  prejudice  would  result  to  the  estate  by  not  con- 
tinuing the  action.** 

The  question  who  may  be  parties  defendant  involves 
necessarily  a  discussion  of  some  of  the  principles  applied 
by  the  courts  in  infringement  proceedings. 

Von   Micheroux,    25    N.   Y.   Supp.  Simeon  L.  &  George  H.  Rogers  Co., 

857.     To  the  same  effect  see  Hu-  110  Fed.  Rep.  955. 

wer  V.  Dannenhoffer,  82  N.  Y.  499.  42— Fish    Bros.    Wagon    Co.    v. 

Hazard  v.  Caswell,  93  N.  Y.  259.  Fish  Bros.  Mfg.  Co.,  87  Fed.  Rep. 

40— New  York    Cement    Co.    v.  203. 

Coplay  Cement  Co.,  45  Fed.   Rep.  43— Dent  v.  Turpin,  30  L.  J.  Ch. 

212.  495;    Seb.  196. 

41 — International    Silver    Co.  v.  44 — Republic  of  Peru  v.  Reeves, 

40  N.  Y.  Sup.  Ct.  316. 


§  143]  COURTS,    PARTIES   AND    CAUSES.  337 

Where  the  plaintiff,  the  sole  owner  of  a  mineral 
spring,  leased  it  to  one  who  adopted  a  name  to  indicate 
its  waters,  the  concessionaire  was  enjoined  at  the  in- 
stance of  the  owner  from  applying  the  name  so  used  to 
water  from  another  spring  ;^'^'  and  in  a  case  where  the 
owner  of  a  spring  granted  concessions  to  another  con- 
veying the  selling  privileges  in  certain  countries,  the 
concessionaire  was  enjoined  from  interfering  with  the 
sale  in  those  countries  of  water  from  the  spring  sold 
through  parties  other  th^yi  the  concessionaire.*" 

A  manufacturer  may  delegate  the  right  to  use  his 
trademark  to  sales  merchants,  giving  them  that  right 
only  so  long  as  they  buy  goods,  of  the  class  to  which  the 
trademark  belongs,  from  him.  Upon  their  ceasing  to  so 
purchase  their  goods  they  will  be  enjoined  from  the  use 
of  the  mark."*^ 

A  firm  of  shippers  of  merchandise  who  applied  the 
name  ''The  Keystone  Line"  to  vessels  they  did  not  own, 
but  of  which  they  had  the  exclusive  management  in  load- 
ing and  unloading,  w^ere  held  to  have  acquired  such  an 
exclusive  right  in  the  name  that  the  owners  of  the  ves- 
sels so  used  were  enjoined  from  using  the  name  when 
the  shippers  transferred  their  business  to  other  vessels, 
the  property  of  other  ship-owners.** 

One  who  is  merely  a  forwarding  agent  may  be  en- 
joined. In  an  English  case  a  firm  of  forwarding  agents 
in  London  received  from  foreign  correspondents  several 
packages  of  cigars  bearing  forged  brands.  They  were 
enjoined,  but  costs  were  not  assessed  against  them  be- 
cause they  had,  prior  to  suit,  given  the  makers  of  the 
brands  so  counterfeited  full  information  as  to  the  con- 


45— Hill    V.    Lockwood,    32    Fed.  47— Re   Riviere,   53   L.   T.   N.   S. 

Rep.  389.  237.    See  also  Lavergne  v.  Hooper, 

46— Apolllnaris     Co.     (Ltd.)     v.  Ind.  L.  R.  8  Mad.  149. 

Scherer.   23   Blatchf.   459,   27   Fed.  48— Winsor   v.   Clyde,    9    Phila. 

Rep.  18.  513. 
22 


338  HOPKINS   ON    TRADEMARKS.  [§  143 

signees  and  offered  to  return  the  cigars  to  the  consign- 
ors or  to  erase  the  brands.^ '^ 

The  managers  of  an  infringing  corporation,  who  are 
themselves  substantially  the  corporation,  are  properly 
joined  as  co-defendants  with  the  corporation  in  a  bill  to 
restrain  the  infringement.^^  The  directors  of  an  in- 
fringing corporation  may  be  joined  as  co-defendants 
with  it.^i 

Servants,  agents,  and  employes  generally,  may  be 
joined  as  defendants;  they  are  personally  liable  to  in- 
jmiction/'-  American  agents  of  foreign  houses  will  be 
enjoined  from  selling  counterfeits  or  imitation  goods  re- 
ceived from  their  principals.^^  The  same  rule  obtains 
in  regard  to  English^^  or  Australian'^^  agents  of  foreign 
principals,  and  in  regard  to  commission  merchants.^^ 

The  principal  is,  of  course,  liable  for  the  acts  of  his 
servants  or  agents,  whether  or  not  he  can  be  shown  to 
have  knowledge  of  those  acts.^^ 

Difficulty  arises  in  considering  the  rights  and  liabili- 
ties of  innocent  j)arties  through  whose  hands  counter- 
feit goods  pass  in  transit,  who  hold  them  only  as  bailees 
and  have  no  actual  or  imputed  knowledge  of  their  fraud- 
ulent nature.     In  the  case  of  wharfingers   so   situated, 

49— Upmann  v.  Elkan,  L.  R.  12  54— Siegert  v.  Ehlers,  Seb.  432; 

Eq.  140;    L.  R.  7  Ch.  Ap.  130.  Siegert  v.   Findlater.   L.  R.   7   Ch. 

50— California  Fig  Syrup  Co.  v.  D.  801;    Farina  v.  Cathery,  L.  J. 

Improved   Fig   Syrup   Co.,   61   Off.  N.  C.  1867,  p.  134. 

Gaz.  155;    51  Fed.  Rep.  296.  55— Siegert  v.  Lawrence,  11  Vict. 

51 — Armstrong  &  Co.  v.   Savan-  L.  R.  47. 

nah  Soap  Works,  53  Fed.  Rep.  124,  56— Coats  v.  Holbrook,  2  Sandf. 

61  Off.  Gaz.  1018.  586;     Cox,   20;     Twentsche    Stoorn 

52 — Estes    V.    Worthington    (2),  Bleekery  Goor  v.  Ellinger,  26  W. 

30  Fed.  Rep.  465;    Sawyer  v.  Kel-  R.  70. 

logg    (1),   7   Fed.    Rep.  721;    Saw-  57— Low  v.  Hart,  90  N.  Y.  457; 

yer  v.  Kellogg   (2),    9    Fed.  Rep.  Atkinson   v.   Atkinson,    85    L.    T. 

601.  Jour.      229;       Twentsche       Stoom 

53 — Carbolic  Soap  Co.  v.  Thomp-  Bleekery  Goor  v.   Ellinger,  26  W. 

son,  25  Fed.  Rep.  625;    Roberts  v.  R.  70;    Tonge  v.  Ward,  21  L.  T.  N. 

Sheldon,  8  Biss.  398,  Fed.  Case  No.  S.  480. 
11916. 


§  143]  COURTS,    PARTIES   AND    CAUSES.  339 

wlio  offered  to  act  in  regard  to  falsely  marked  wine  in 
their  possession  as  the  court  might  direct,  but  asked  to 
have  their  charges  ijrovided  Tor,  the  court  ruled  that 
tliey  were  entitled  to  a  lien  ujwn  the  wine  for  their 
charges;  that  plaintiffs  must  pay  defendant's  costs;  and 
if  the  phiintiffs  had  any  lien  for  their  own  costs  as 
against  the  wine,  it  nmst  be  subject  to  the  lien  of  the 
wharfingers  for  their  charges.''^ 

An  innocent  mortgagee  of  wines  bearing  a  simulated 
mark  was  held  to  have  a  valid  lien  thereon,  and  it  was 
directed  that  the  spurious  marks  should  be  effaced  and 
the  wines  delivered  to  him.'''* 

In  no  case,  however,  will  relief  in  equity  stop  short  of 
protecting  the  owner  of  a  trademark  of  which  imitations 
or  counterfeits  are  found  in  the  hands  of  a  common  car- 
rier or  warehouseman.""  It  is  the  duty  of  the  bailee  so 
situated  to  give  the  owner  of  the  trademark  full  infor- 
mation in  regard  to  the  goods  which  are  or  have  been  in 
his  hands  by  virtue  of  the  bailment,  and  where  he  re- 
fuses so  to  do,  even  after  the  goods  have  gone  beyond 
his  control,  it  has  been  held  that  a  bill  will  lie  against 
him  to  compel  discovery .*^^ 

If,  on  the  other  hand,  the  bailee  gives  the  owner  of  the 
mark  full  information,  he  will  be  allowed  costs  if,  not- 
withstanding his  disclosures,  proceedings  are  instituted 
against  him.*'-  The  wrongs  of  which  this  book  treats 
being  torts,  and  all  participants  in  torts  being  principals, 

58 — Moet  V.   Pickering,   L.   R.    6  Upmann  v.  Elkan,  L.  R.  12  Eq.  140. 

Ch.  D.  770:    L.  R.  8  Ch.  D.  372.  61— Orr  v.   Diaper,  L.  R.   4   Ch. 

59 — Ponsardin  v.  Peto,  33  Beav.  D.  92.     See  also   Carver  v.   Pinto 

642.  Leite,  L.  R.  7  Ch.  D.  90;   41  L.  J. 

60— Ponsardin  v.  Peto,  33  Beav.  Ch.  92;    25  L.  T.  N.  S.  722;    20  W. 

642;     Hunt   v.    Maniere.   34   Beav.  R.  134. 

157;     Del  Valle    v.    Mayer,   Seton  62— Upmann  v.   Currey,   29   Sol. 

(4th  ed.),  236;  Seb.  326;  Rivero  v.  J.  735;    Upmann  v.  Forester,  L.  R^ 

Norris.  Seton   (4th  ed.),  236;   Seb.  24  Ch.  D.  231;    Moet  v.  Pickering, 

299;     Moet  v.   Pickering,   L.   R.   6  L.    R.    8   Ch.    D.   372;     Upmann   v. 

Ch.  D.  770;     L.  R.  8   Ch.   D.  372;  Elkan,  L.  R.  12  Eq.  140. 


340  HOPKINS   ON   TRADEMARKS.  [§  144 

a  person  who  assists  in  conducting  an  unfair  competition 
by  furnishing  frauduluent  packages  or  labels  is  liable  for 
the  injury  resulting  to  the  plaintiff  from  the  unfair  com- 
petition.^3 

§  144.  Forms  of  action.— The  most  usual  form  of  civil 
action  to  secure  redress  for  trademark  piracy  in  this 
country  is  by  bill  in  equity,  praying  for  an  injunction, 
discovery,  account  of  profits,  and  damages.  The  rem- 
edy at  law  is  by  an  action  on  the  case,  for  deceit;  that 
form  of  action  being  both  the  form  known  to  the  com- 
mon law  and  that  prescribed  by  the  act  of  March  3,  1881. 

An  action  of  deceit  may  be  brought  by  a  purchaser 
who  has  been  deceived  by  the  vendor  of  the  fraudulent 
article,  but  such  actions  are  seldom,  if  ever,  brought, 
and  are  practically  unheard  of. 

One  action  in  a  federal  court  will  lie  for  the  infringe- 
ment of  a  patent  and  the  infringement  of  a  trademark, 
where  the  trademark  and  the  patent  were  both  infringd 
together,^*  and  the  same  rule  applies  where  a  publication 
infringes  both  a  trademark  and  a  copyright.^^ 

63— Hildreth  v.  Sparks  Mfg.  Co.,  Fleece  Underwear  Co.,  60  Fed.  Rep. 

99  Fed.  Rep.  484.  622. 

64— Walker,  Patents     (3d    ed.),  65— Harper  v.  Holman,  84  Fed. 

sec.  417;    Jaros  Underwear  Co.  v.  Rep.  222. 


CHAPTER  XL 

THE  CRIMINAL  PROSECUTION— FEDERAL  AND  STATE. 

§  145.  The  act  of  1876.— The  prosecutions  under  which 
the  decision  styled  the  Trademark  Cases^  was  rendered 
were  instituted  under  the  act  of  congress  of  187().  This 
was  a  penal  act  applicable  to  infringers  of  trademarks 
registered  under  the  registration  act  of  1870.  Mr.  Jus- 
tice Miller  says,  in  the  conclusion  of  his  opinion:  "Wliile 
we  have,  in  our  references  in  this  opinion,  had  mainly  in 
view  the  act  of  1870,  and  the  civil  remedy  which  that  act 
provides,  it  was  because  the  criminal  offenses  described 
in  the  act  of  1876  are,  by  their  express  tenns,  solely  ref- 
erable to  frauds,  counterfeits,  and  unlawful  use  of  trade- 
marks which  were  registered  under  the  provisions  of 
the  former  act.  If  that  act  is  unconstitutional,  so  that 
the  registration  under  it  confers  no  lawful  right,  then 
the  criminal  enactment  intended  to  protect  that  right 
falls  with  it.  "2 

After  the  enactment  of  the  act  of  March  3,  1881,  some 
able  lawyers  inclined  to  the  belief  that  the  act  of  1876 
was  by  the  passage  of  a  valid  registration  act  given  new 
life,  or,  as  stated  by  one  eminent  jurist:  "This  is  not 
an  instance  of  revival ;  for  the  penal  act  was  not  dead, 
but  simply  dormant.  Its  sleep  was  ended  by  the  birth  of 
the  act  of  1881.  No  words  were  required  in  the  latter 
to  set  the  penal  law  in  motion.  That  which  is  implied 
in  a  statute  is  just  as  much  a  part  of  it  as  is  that  which 
is  expressed.  Nor  is  it  repealed  by  the  civil  act  of 
1881.  "3 

1—100  U.  S.  82.  3— Browne,      Trademarks      (2d 

2— Trademark   Cases.   100  U.   S.     ed.),  sec.  371. 
82-99. 

.'Ul 


342  HOPKINS   ON    TRADEMARKS.  [§  145 

This  reasoning,  however,  has  not  been  followed  by 
the  courts.  The  proposition  was  first  submitted  to  Judge 
Thayer,  but  in  his  opinion  he  expressly  refrained  from 
deciding  it,  sustaining  demurrers  to  indictments  based 
upon  the  act  of  1876  upon  other  grounds.-^  Subsequently 
the  question  was  squarely  presented  to  Mr.  Justice  Brew- 
er, sitting  as  circuit  judge,  who  said  in  substance: 
"While  the  act  of  1870  was  a  nullity,  it  must  be  assumed 
as  a  matter  of  fact  that  in  framing  the  act  of  1876  the 
penalties  imposed  were  with  reference  to  the  terms  of 
the  statute  of  1870.  *  *  *  Again,  when  the  act  of 
1881  was  passed,  if  congress  had  intended  that  penalty 
should  be  imposed  for  a  trespass  upon  the  rights  con- 
ferred by  that  statute,  or  if  it  had  intended  that  the  act 
of  1876  should  be  re\dvified  and  operate  upon  the  act  of 
1881,  it  was  very  easy  to  say  so.  Its  silence  in  this  re- 
spect is  cogent  evidence  that  it  did  not  understand  or  in- 
tend that  the  penal  statute  should  be  considered  a  part  of 
present  and  valid  law.  And  that  assumption  is  strength- 
ened by  the  fact  that  it  had  before  it  for  consideration 
this  passage  from  the  opinion  of  the  supreme  court 
(quoted  above)  in  which  it  is  broadly  stated  that  the 
Act  of  1876  had  fallen  with  the  Act  of  1870.  Whatever 
may  be  true  as  to  the  full  meaning  of  that  decision,  or 
as  to  the  general  power  of  congress  to  impose  penalties 
for  trespasses  upon  rights  having  no  existence,  it  had  be- 
fore it  the  general  affirmance  by  the  court  that  the  law 
of  1876  had  fallen,  and  it  must  be  assumed  that  if  it 
meant  that  it  should  stand  and  be  vivified,  or  that  any 
penalties  should  be  imposed  for  violations  or  the  law  of 
1881,  it  would  have  so  stated.  These  considerations  con- 
vince me  very  strongly  that  the  Act  of  1876  has,  as  the 
supreme  court  said,  fallen  with  the  Act  of  1870,  and  it  is 
as  much  a  dead  letter  as  the  Act  of  1870,  and  was  not 
vivified  or  given  operative  force  by  the  Act  of  1881."^ 

4— United    States    v.    Braun,    39        5— United     States   v.    Koch,     40 
Fed.  Rep.  775-777.  Fed.   Rep.   250-252. 


S  146 J  THE  CRIMIN.VL  PROSECUTION.  343 

The  Act  of  1876,  then,  is  no  longer  of  force,  and  tliere 
is  no  federal  relief  by  criminal  prosecution  to  be  had; 
except  that  under  certain  conditions,  which  we  will  ex- 
amine in  the  next  section,  the  owners  of  trademarks  ap- 
plied to  spirituous  liquors  and  wines  may  be  measurably 
protected  by  federal  prosecution  under  the  internal  rev- 
enue laws. 

§  146.  Section  3449,  Revised  Statutes.— In  the  last 
paragraph  of  section  29  of  the  act  of  congress  approved 
July  13,  18G6,  and  entitled  "An  act  to  reduce  internal 
taxation  and  to  amend  an  act  entitled  'An  act  to  provide 
internal  revenue  to  support  the  government,  to  pay  in- 
terest on  the  public  debt,  and  for  other  purposes,'  ap- 
proved June  30,  1864"  (now  section  3449,  Revised  Stat- 
utes of  tlie  United  States),  it  is  provided  as  follows: 

**  Whenever  any  person  ships,  transports,  or  removes 
any  spirituous  or  fermented  liquors  or  wines,  under  any 
other  than  tlie  proper  name  or  brand  known  to  the  trade 
as  designating  the  kind  and  quality  of  the  contents  of 
the  casks  or  packages  containing  the  same,  or  causes 
such  act  to  be  done,  he  shall  forfeit  said  liquors  or  wines, 
and  casks  or  packages,  and  be  subject  to  paj  a  fine  of 
five  hundred  dollars." 

This  enactment  is  constitutional,  being  within  the  au- 
thority delegated  to  congress  by  the  first  clause  of  sec- 
tion 8  of  article  1  of  the  constitution,  being  to  "levy  and 
collect  taxes,"  and  to  "make  all  laws  which  shall  be  nec- 
essary and  proper  for  carrying  into  execution  that  pow- 
er." It  is  no  objection  to  the  validity  of  the  act  that 
its  enforcement  incidentally  protects  the  owners  of  trade- 
marks. As  stated  by  Mr.  Justice  Nelson  in  another  con- 
nection: "It  will  not  do  to  say  that  the  exercise  of  an 
admitted  power  of  congress  conferred  by  the  constitution 
is  to  be  withheld,  if  it  appears,  or  can  be  shown,  that  the 
effect  and  operation  of  the  law  may  incidentally  extend 
beyond  the  limitation  of  the  })0wer.    Upon  any  such  in- 


344  HOPKINS   ON    TRADEMARKS.  [§  147 

terpretation  the  principal  object  of  the  framers  of  the 
instrument  in  conferring  the  power  would  be  sacrificed 
to  the  subordinate  consequences  resulting  from  its  exer- 
cise."^ It  has  therefore  been  held  constitutional  by 
Judges  Lacombe/  Thayer,  Sanborn,  CaldwelP  and  Haw- 
ley.*^  Under  this  section  the  term  ''package"  includes 
every  box,  barrel,  or  other  receptacle  into  which  distilled 
spirits  have  been  placed  for  shipment  or  removal,  either 
in  quantity  or  in  separate  small  packages,  as  bottles  or 
jugs.^*^  The  phrase  "proper  name  or  brand"  does  not 
refer  to  the  trademark  or  make  of  a  certain  distiller,  but 
to  a  removal  under  an  improper  or  misleading  title,  as 
where  the  fraud  on  the  government  is  attempted  of  re- 
moving brandy  under  the  name  of  whiskey.  "^^ 

What  will  constitute  transportation  or  removal  under 
the  terms  of  this  act  is  not  determined,  and  will  prob- 
ably depend  upon  the  facts  in  each  particular  case.  The 
act  includes  in  its  purview  any  person  who  ships,  trans- 
ports or  removes  liquors  in  violation  of  its  provisions.^ - 

This  act  is  capable  of  protecting  to  a  great  extent  the 
owners  of  trademarks  used  in  the  liquor  trade. 

§  147.  Criminal  liability  at  coimnon  law.— The  coun- 
terfeiter of  a  trademark  is  not  guilty  of  forgery.^ ^  His 
offense  is  comprehended  under  some  division  of  the  vari- 
ous fraud  acts.    Probably  it  will  always  be  found  to  fall 

6— state      of      Pennsylvania     v.  Wines,  76  Fed.  Rep.  364-368,  22  C. 

V/heeling  &  Belmont    Bridge    Co.,  C.  A.  228. 

59  U.  S.  421-433.  11— United   States   v.   132   Pack- 

7 — United     States    v.    Loeb,    49  ages    of    Spirituous    Liquors     and 

Fed.  Rep.  636.  Wines,  76  Fed.  Rep.  364-368,  22  C. 

8— United   States    v.    132   Pack-  C.  A.  228. 

ages    of    Spirituous     Liquors    and  12 — United  States  v.  Campe,  89 

Wines,  22  C.  C.  A.  228,  76  Fed.  Rep.  Fed.  Rep.  697-699. 

364;   reversing  same  case,  65  Fed.  13 — White  v.  Wagar,  185  111.  195- 

Rep.  980.  202.    He  may  be,  where  the  coun- 

9 — United    States   v.    Campe,    89  terfeit  mark  contains  a  guaranty. 

Fed.  Rep.  697.  expressed    or    implied.     White  v. 

10— United    States  v.   132    Pack-  Wagar,  83  III.  App.  592-596. 

ages    of    Spirituous    Liquors    and  , 


§  148]  THE  CRIMINAL  PROSECUTION.  345 

within  the  limits  of  the  acts  defining  the  offense  of  ob- 
taining money  under  false  pretenses.^*  But  under  the 
English  decisions  it  is  not  a  forgery,  even  where  the 
trademark  counterfeited  consists  of  a  signature.^ •'•  In 
the  United  States,  however,  prosecutions  have  been  very 
seldom  resorted  to.  The  j^rosecutor  in  actions  sounding 
in  false  pretenses  should,  of  course,  be  the  customer  who 
has  been  defrauded,  and  as  a  iiile  he  is  little  inclined  to 
prosecute. 

§  148.  The  penal  statutes  of  the  several  states.— The 
more  imjDortant  statutes  relating  to  trademark  protection 
are  set  out  in  the  api^endix.  It  will  be  noticed,  upon 
examining  them,  that  legislation  has  enlarged  it  for 
the  protection  of  labor  organizations  and  of  particular 
industries;  thus,  states  having  no  general  registration 
act,  have  provisions  for  the  registration  and  protection 
of  timber  marks,  or  of  the  packages,  such  as  bottles,  or 
syphons,  used  by  the  manufacturers  of  carbonated  wat- 
ers, or  the  milk  cans  of  the  daiiy  industry.  In  the  stat- 
utes, which  have  been  reproduced  in  the  apj^ndix,  are 
to  be  found  admirable  examples  of  every  form  of  trade- 
mark legislation  which  the  necessities  of  commerce  have 
thus  far  created.  An  adequate  registration  act  in  each 
of  the  states  which  now  has  no  general  statutory  provis- 
ion upon  that  subject,  and  greater  uniformity  of  legis- 
lation between  the  states,  are  greatly  to  be  desired.  In 
the  annotations  of  these  cases,  it  will  be  noticed  that 
there  have  been  comparatively  few  reported  cases  of 
criminal  prosecution  under  them.  The  heavy  burden  of 
proof  imposed  upon  the  state  in  these  cases  has  served 
as  a  deterrent  to  such  prosecution.  Thus  the  Illinois 
court  held  that  proof  that  two  persons,  strangers  to 
the  defendant,  had  told  him  that  the  mark  on  the  goods 

14— Regina   v.  Smith,   D.   &   B.  8   Cox,  37;     Regina  v.   Dundas,   6 

566;    8  Cox,  32.  Cox.   380;     Regina    v.    Gray,   Seb. 

15— Regina  v.  Closs.    D.    &    B.  183;     Regina  v.   Sutter,    10    Cox, 

460;    7  Cox,  494;  Regina  v.  Smith,  577. 


346  HOPKINS   ON    TRADEMARKS.  [§  148 

lie  was  selling  was  counterfeit,  was  not  necessarily  suffi- 
cient to  prove  his  guilty  knowledge.^  ^  This  difficulty 
has  been  remedied  in  Massachusetts  by  the  enactment  of 
a  provision  requiring  a  defendant  charged  with  the  sell- 
ing of  goods  bearing  a  spurious  mark  to  show  that  he 
bought  them  innocently. 

It  is  undoubtedly  proper  legislation  to  impose  this 
requirement  upon  the  defendant.  In  England,  proof  of 
fraudulent  intent  is  not  required  in  a  prosecution  under 
Merchandise  Marks  Act  of  1887.*^ 

16— Vogt  V.  People,  59  111.  App.  17— Wood  v.  Burgess,  L.  R.  24 
684.  Q.  B.  D.  162. 


CHAPTER  XII. 

ACTIONS   AT    LAW. 

§149.  The  form  of  action.— "The  only  redress  for  a 
trademark  infringement  was  at  first  by  an  action  in  a 
common  law  court  for  damages  for  deceit.^  An  ac- 
tion at  law  for  damages  is  prescri})ed  by  the  act  of  1905, 
as  a  proper  legal  remedy  for  infringements  of  trade- 
marks.^ It  is  against  the  policy  of  the  law  that  the 
owner  of  a  valid  trademark  should  lose  by  reason  of  its 
infringement.  To  prevent  such  a  result,  the  action  at 
law  is  well  adapted,  because  it  measures  the  plaintiff's 
recovery  by  the  plaintiff's  loss.  But  it  is  also  against 
the  policy  of  the  law  that  an  infringer  should  gain  by 
reason  of  his  infringement. 

By  Sec.  7  of  the  Act  of  1881  the  action  of  trespass  on 
the  case  was  specified  as  the  appropriate  action  at  law 
for  trademark  infringement. 

The  history  of  this  form  of  action  has  been  succinctly 
described  by  English  jurists.  Lord  Blackburn  said: 
**The  original  foundation  of  the  whole  law  is  this:  that 
when  one  knowing  that  goods  are  not  made  by  a  partic- 
ular trader  sells  them  as  and  for  the  goods  of  that  trad- 
er, he  does  that  which  injures  that  trader.  At  first  it 
was  put  upon  the  ground  that  he  did  so  when  he  sold  in- 
ferior goods  as  and  for  the  trader's;  but  it  is  established 
(alike  at  law^  and  in  equity^  that  it  is  an  actionable  in- 
jury to  pass  off  goods  known  not  to  be  the  plaintiff's  as 
and  for  the  plaintiff's,  even  though  not  inferior."^ 

1 — Gaynor,  J.,  in  Clinton  Metal-        4 — Edelsten  v.  Edelsten,  1  DeG. 
lie  Paint  Co.  v.  New  York  Metallic     J.  &  S.  185. 
Paint  Co.,  50  N.  Y.  Supp.  437.  5— Singer   Mfg.   Co.   v.   Loog,    L. 

2— Act  of  February  20,  1905,  §  16.     R.  8  A.  C.  15-29. 

3— Blofield  V.  Payne,  4  B.  &  Ad. 
410.  347 


348  HOPKINS   ON    TR.VDEMARKS.  [§  149 

The  development  of  the  action  on  the  case,  and  the 
manner  in  which  it  became  adapted  to  the  exigencies  of 
trademark  issues,  are  thus  admirably  stated  by  Mellish, 
Li,  J.:  "In  my  opinion  all  actions  of  this  nature  must 
be  founded  upon  false  representations.  Originally,  I 
apprehend,  the  right  to  bring  an  action  in  respect  of  the 
improper  use  of  a  trademark  arose  out  of  the  common 
law  right  to  bring  an  action  for  a  false  representation, 
which,  of  course,  must  be  a  false  representation  made 
fraudulently.  It  differed  from  an  ordinary  action  for 
false  representation  in  this  respect:  that  an  action  for 
false  representation  is  generally  brought  by  the  person 
to  whom  the  false  representation  is  made;  but  in  the 
case  of  the  improper  use  of  a  trademark,  the  common 
law  courts  noticed  that  the  false  representation  which  is 
made  by  putting  another  man's  trademark,  or  the  trade- 
name of  another  manufacturer,  on  the  goods  which  the 
wrong-doer  sells,  is  calculated  to  do  an  injury,  not  only 
to  the  person  to  whom  the  false  or  fraudulent  represen- 
tation is  made,  but  to  the  manufacturer  whose  trademark 
is  imitated;  and,  therefore,  the  common  law  courts  held 
that  such  a  manufacturer  had  a  right  of  action  for  the 
improper  use  of  his  trademark.  Then  the  common  law 
courts  extended  that  doctrine  one  step  further;  first,  if  I 
recollect  rightly,  in  the  case  of  Sykes  v.  Sykes.^  There 
it  was  held  that  although  the  representation  was  ^r- 
fectly  true  as  between  the  original  vendor  and  the  origi- 
nal purchaser,  in  this  sense,  that  the  original  purchaser 
knew  perfectly  well  who  was  the  real  manufacturer  of 
the  goods  and  therefore  was  not  deceived  into  believing 
that  he  had  bought  goods  manufactured  by  another  per- 
son, yet  if  the  trademark  was  put  on  the  goods  for  the 
purpose  of  enabling  that  purchaser,  when  he  came  to  re- 
sell the  goods,  to  deceive  any  one  of  the  public  into 
thinking  that  he  was  purchasing  the  goods  of  the  manu- 

6—3  B.  &  Cr.  541. 


§  150]  ACTIONS    AT    LAW.  349 

facturer  to  whom  the  trademark  properly  belonged,  then 
that  was  equally  a  deception,  a  selling  of  goods  with  a 
false  representation,  which  would  give  the  original  user 
of  the  trademark  a  right  of  action.  That  was  the  com- 
mon law  right.  "^ 

§  150.  The  declaration.— The  proper  parts  of  a  decla- 
ration in  an  action  at  law  are,  in  their  order,  as  follows: 

1.  The  title  of  the  court. 

2.  The  title  of  the  teim. 

3.  The  name. 

4.  The  commencement. 

5.  The  statement  of  the  right  of  action. 

6.  The  conclusion. 

The  correct  title  of  the  United  States  Circuit  Court 
established  in  the  northern  district  of  California  is  "The 
Circuit  Court  of  the  United  States  for  the  Northern  Dis- 
trict of  California,"  and  the  titles  of  the  various  other 
circuit  courts  are  the  same,  except  as  to  the  name  of  the 
district,®  to  which  should  be  added  the  name  of  the  divi- 
sion of  the  district,  where  the  judicial  districts  are  sub- 
divided. 

The  term  in  which  the  declaration  should  be  entitled  is 
the  term  to  which  the  defendant  is  summoned.^  It  is  un- 
necessary to  entitle  a  declaration  in  the  name  of  the  case 
in  which  it  is  filed;  the  style  of  the  case  may  be  indorsed 
upon  the  back  of  the  declaration  as  a  matter  of  conven- 
ience.^^ 

The  venue  should  be  laid  in  the  district  where  the  dec- 
laration is  filed,  regardless  of  the  district  or  districts 
wherein  the  infringement  was  committed.^  ^ 

The  commencement  sets  forth  the  names  of  the  parties 
and  the  capacity  in  which  they  respectively  sue  or  are 
sued,  if  it  is  other  than  a  natural  capacity.^  ^ 

7— Singer  Mfg.  Co.  v.  Wilson,  L.        10— Walker,   Patents     (3d    ed.), 

R.  2  Ch.  D.  434-453.  sec.    422. 

8— Revised  Statutes,  sec.  608.  11— Ibid. 

9— Chitty,    Pleading    (15th    Am.         12— Ibid, 
ed.),  p.  263. 


350  HOPKINS   ON    TRADEMARKS.  [§  150 

xV  corporation  cannot  be  or  become  a  citizen  of  a 
state/ ^  and  therefore  an  averment  of  its  citizenship  is 
improper.  "When  a  coi'poration  is  a  party  the  corporate 
name  should  be  set  forth,  followed  by  the  averment  that 
the  said  corporation  '*is  a  corporation  created  under  the 

laws  of  the  state  of ,  and  having  its  principal  place 

of  business  at ."^■^ 

The  courts  of  the  United  States  having  a  limited  jur- 
isdiction, the  jurisdictional  facts  must  be  expressly 
pleaded  in  the  declaration.  Diverse  citizenship,  if  it  ex- 
ists, must  be  shown.  If  the  trademark  involved  is  reg- 
istered under  the  act  of  Feb.  20,  1905,  that  fact  must 
be  pleaded,  because,  first,  it  establishes  a  prima  facie 
right  to  the  use  of  the  mark,  and  second,  confers  juris- 
diction upon  the  federal  court  regardless  of  the  amount 
in  controversy.^^ 

If  the  action  is  between  citizens  of  the  same  state,  even 
though  involving  a  registered  trademark,  the  declara- 
tion must  aver  that  the  plaintiff  uses  the  trademark  and 
the  defendant  the  infringing  mark  upon  goods  intended 
for  commerce  with  foreign  nations  or  with  the  Indian 
tribes  or  interstate  commerce.^ ^  If  the  action  is  based 
upon  a  common  law  trademark,  the  declaration  must  set 
forth  the  amount  in  controversy,  which  is  not  the  amount 
sought  to  be  recovered,  but  the  value  of  the  trademark,  and 
that  value  must  be  not  less  than  two  thousand  dollars.^'^ 

13— Paul    V.    Virginia,    8    Wall.  Oswald,  65  Fed.  Rep.  151;   Hennes- 

168;   Ducat  V.  Chicago,  10  Wall.  410.  sy  v.  Herrmann,  89  Fed.  Rep.  669; 

14 — Shiras,  Equity  Practice    (2d  ReKeasbey  &  Mattison  Co.,  160  U. 

ed.),  sec.  34.    Citing  Lafayette  Ins.  S.  221-227. 

Co.  V.  French,  18  How.  404;   Rail-         16— Luyties  v.  Hollender  (1),  22 

road   Co.   v.   Harris,   12   Wall.   65;  Blatchf.      413;       Schumacher      v. 

Ex  parte  Schollenberger,  96  U.  S.  .  Schwenke    (1),  26  Fed.  Rep.  818; 

369;  Pennsylvania  Co.  v.  Railroad  Ryder   v.    Holt,    128     U.     S.     525; 

Co.,  118  U.  S.  290;  Goodlet  v.  Rail-  Gravely  v.   Gravely,   42  Fed.   Rep. 

road,  122  U.  S.  391.  265;  Prince's  Metallic  Paint  Co.  v. 

15— Act  of  March  3,  1881,  sec.  7;  Prince  Mfg.  Co.,  53  Fed.  Rep.  493. 
Act  of  1905,  §§  16,  17.     Symonds  v.         17— Symonds  v.  Greene,  28  Fed. 

Greene,  28  Fed.  Rep.  834;  Glotin  v.  Rep.  834. 


§  150J  ACTIONS    AT    LAW.  351 

Fraud  is  essential  to  recovery  at  law.  Lord  Westburj^ 
said,  ''Proof  of  fraud  on  the  part  of  the  defendant  is  of 
the  essence  of  the  action.  "^^  Furthennore,  at  law  it  is 
necessary  to  show,  and  plead,  that  an  injury  has  actually 
been  done  by  the  defendant's  act  of  infringement.''-' 

The  averment  of  infringement  should  set  forth,  then, 
in  what  the  infringement  consisted,  and  that  it  was  done 
wilfully  and  with  fraudulent  intent  on  the  part  of  the 
defendant.  The  statement  of  the  right  of  action  should 
describe  the  trademark  in  exact  and  appropriate  terms, 
and  where  possible  the  real  and  simulated  marks  should 
be  reproduced  in  fac-simile. 

The  conclusion  of  the  declaration  should  pray  for  the 
actual  damage  sustained  by  the  plaintiff  and  for  puni- 
tive damages  if  tlie  facts  justify.  Some  adjudications  in 
the  past  have  held  that  there  can  be  no  recovery  of  pun- 
itive damages,-*^  but  such  a  conclusion  is  at  variance  with 
the  fundamental  principles  of  the  law  of  torts.  The 
more  wholesome  and  better  reasoned  doctrine  is  to  the 
contrary.-^ 

In  Sec.  16  the  Act  of  1905  provides  in  relation  to  ac- 
tions at  law  for  damages  for  the  infringement  of  a  reg- 
istered mark,  that  "whenever  in  any  such  action  a  ver- 
dict is  rendered  for  the  plaintiff,  the  court  may  enter 
judgment  therein  for  any  sum  above  the  amount  found 
by  the  verdict  as  the  actual  damages,  not  exceeding  three 
times   the   amount   of   such   verdict,   together   with   the 

18— Edelsten  v.  Edelsten,  1  DeG.  Scott,   N.   R.   562;    11   I>.  J.   C.   P. 

J.  &  S.   185;    Hargraves  v.   Smith,  301;   Seb.  72. 

Seb.  338;  Lawson  v.  Bank  of  Lon-  19— Singer  Mfg.  Co.  v.  Loog  (3), 

don,  18  C.  B.   84;    25  L.  J.  C.  P.  L.  R.  8  App.  Cas.  15-30. 

188;  2  Jur.  N.  S.  716;  27  L.  T.  134;  20 — Taylor  v.   Carpenter    (2),   2 

4  W.  R.  481;  Seb.  140;  Rodgers  v.  Wood.  &  M.   1;    Cox,   32;    9  L.   T. 

Nowill.  6  Hare,  325;    5  C.  B.  109;  514;  Seb.  83. 

17  L.   J.   C.   P.   52;    11   Jur.   1039;  21 — Warner  v.  Roehr,  Fed.  Case 

10  L.  T.  88;   Seb.  82;   Crawshay  v.  No.   17189 A;    Day    v.    Woodworth, 

Thompson,   4   Man.   &  G.    357;     5  13  How.  363;  Browne,  Trademarks 

(2d  ed.),  sees.  519,  520. 


352  HOPKINS   ON    TRADEiIAUr;:S.  [§  150 

costs."  In  a  declaration  based  upon  the  infringement 
of  a  mark  registered  under  the  act,  the  conclusion  should 
pray  for  the  actual  damages  stated  to  have  been  sus- 
tained by  the  plaintiff,  together  with  such  additional 
amount,  not  exceeding  in  all  three  times  the  amount  of 
such  actual  damages,  as  the  court  may  see  fit  to  adjudge, 
together  with  the  costs. 

The  conclusion  ends  with  the  formal  allegation  of 
bringing  suit. 

It  is  necessary  at  common  law  in  drafting  the  declara- 
tion to  directly  allege  that  the  injury  has  been  commit- 
ted by  continuation  from  one  given  time  to  another  or 
that  it  was  committed  on  divers  days  and  times.  Thus, 
one  pleader  alleged  in  his  declaration  as  follows :  ' '  Since 
the  1st  day  of  November,  1888,  knowingly,  wilfully,  and 
fraudulently  offered  for  sale,  and  is  now  selling,  glue  in 
packages."  Upon  the  trial,  in  the  federal  circuit  court 
for  the  district  of  Massachusetts,  the  complainant  was 
permitted  to  introduce  proof  of  sales  by  the  defendant 
of  infringing  goods  between  November  1,  1888,  and  No- 
vember 30,  1889,  amounting  to  $56,318.24.  The  circuit 
court  of  appeals  of  the  fourth  circuit  set  aside  a  judg- 
ment of  $8,000,  entered  upon  the  verdict  of  a  jury,  say- 
ing, by  Putnam,  J.,  ''There  is  no  continiiando  with  refer- 
ence to  the  matter  of  selling;  so  that,  according  to  the 
common  law,  the  plaintiff  could  j^roperly  prove  only  one 
actual  sale  as  an  independent  basis  of  damages.  The  de- 
fendant insisted  at  all  necessar^^  points  on  the  enforce- 
ment of  the  rule,  and  exceptions  were  carefully  taken  and 
allowed;  so  that  this  court,  however  much  it  may  regret 
it,  is  compelled  to  meet  this  issue.  There  is  no  doubt 
that  at  common  law  the  position  of  the  defendant  would 
be  correct  on  this  point,  and  the  Massachusetts  statutes 
relating  to  pleading  have  not  changed  this  rule."22 

22— Le   Page    Co.    v.    Russia   Cement  Co.,  2  C.  C.  A.  555,  51  Fed. 
Rep.  941-949,  17  L.  R.  A.  354. 


§151] 


ACTIONS    AT    LAW. 


353 


§  151.  Defenses.— The  defenses  to  actions  for  trade- 
mark infringement  may  be  divided  into  two  classes.  Tlie 
first  class  embraces  those  defenses  which  attack  the  plain- 
tiff's right  to  sue.  It  may  be  that  the  owner  of  a  trade- 
mark who  sues  for  infringement  has  conveyed  the  right 
to  use  the  mark  to  an  exclusive  licensee  for  a  term  of 
years.  In  such  a  case  no  injunction  can  issue  unless  the 
licensee  joins  in  the  action.--^  It  may  be  advisable  to  set 
up  laches  or  acquiescence,  or  that  there  are  facts  to  jus- 
tify a  plea  that  whatever  rights  the  complainant  once 
had  he  has  lost  by  abandonment;  which  matters  have 
been  discussed  in  a  preceding  chapter.  In  an  exceptional 
case  the  complainant's  recover>^  may  be  precluded  by 
an  estoppel,-^  which  should,  of  course,  be  pleaded.  The 
complainant's  mark  may  have  become  invalid  because 
its  assignment  to  him  from  its  former  owner  has  not 
been  sufficiently  advertised,  and  the  mark  as  used  tends 
to  mislead  the  public  into  a  belief  that  the  fonner  owner 
is  still  the  producer  of  the  goods.-^  The  complainant's 
label  may  contain  misrepresentations  of  fact,-*'  or  his 
alleged  trademark  may  be  a  word  that,  once  distinctive, 
has  become  puhlici  juris.-''  It  is  a  good  defense  to  the 
action  at  law  to  show  either  of  these  matters.  The  fact 
that  the  complainant's  trademark  is  registered  does  not 
deprive  the  public  of  the  right  to  use  a  similar  mark 
which  was  common  to  the  trade  before  the  registration. 
Thus,  where  "La  Normandi"  was  registered  as  a  mark 
for  cigars,  but  "La  Normanda"  was  already  in  com- 
mon use  for  a  like  purpose,  injunction  to  restrain  the  use 
of  the  latter  was  denied.^^    In  fact  the  registration  of  a 

23— Wallach  v.  Wigmore,  87  Fed.  N.  P.  347;   Krauss  v.  Jos.  R.  Pee- 

Rep.  469.  bles'  Sons  Co.,  58  Fed.  Rep.  585. 

24 — Lavergne  v.  Hooper,  Ind.  L.        27 — Siegert  v,  Abbott  (4),  25  N. 

R.  8  Mad.  149.  Y.  Supp.  590;  72  Hun,  243. 

25 — Alaska     Packers'     Ass'n     v,        28 — Stachelberg  v.  Ponce,  23  Fed. 

Alaska  Imp.  Co.,  60  Fed.  Rep.  103;  Rep.  430;  Price  &  Steuart,  967;  128 

Siegert  v.  Abbott   (1),  61  Md.  286.  U.   S.  686. 

26— Piso  Co.   V.  Voight,   4   Ohio 
23 


354  HOPKINS  ON  TRADEMAEKS.  [§151 

trademark  does  not  prevent  its  being  attacked  as  a 
word  puhlici  juris,  or  as  being  itself  a  colorable  imita- 
tion of  another  trademark.-'^  The  English  decisions 
upon  this  point  are  in  harmony  with  those  of  the  courts 
of  the  United  States.^" 

The  defendant  may  plead  a  license  from  the  owner  of 
the  mark.  This,  of  course,  presumes  that  the  license 
was  lawful,  and  that  the  licensee  has  not  so  used  the 
mark  as  to  perjDetrate  a  fraud  upon  the  public.^^  Where 
two  or  more  persons  have  an  equal  right  in  the  use  of 
the  mark  the  defendant  may  plead  a  license  from  either 
of  them.^^ 

The  second  class  of  defenses  that  may  be  interposed 
are  those  that  deny  the  infringement— either  denying 
that  any  infringement  has  been  perpetrated  by  the  de- 
fendant, or,  if  the  infringing  mark  has  been  handled  or 
dealt  with  by  the  defendant,  denying  that  guilty  knowl- 
edge which  the  complainant  must  prove  to  sustain  his 
suit  at  law. 

In  the  foregoing  portion  of  this  section  we  have  noted 
the  defenses  which,  if  sustained  by  the  proof,  will  re- 
lieve the  defendant  from  liability  at  law.  The  action  at 
law  is  much  easier  of  defense  than  that  in  equity,  and  in 
another  section,  after  we  have  considered  the  action  in 
equity,  will  be  found  enumerated  a  number  of  defenses 

29 — Moorman  v.  Hoge,  Fed.  Case  31 — The  goods  to  which  a  licen- 

No.  9783,  2  Sawyer,  78;   Decker  v.  see  applies  the  mark  must  be  equal 

Decker,    52    How.    Pr.    218;     Glen  in  quality  to  the  goods  to  which 

Cove  Mfg.  Co.  V.  Ludeling,  22  Fed.  the  licensor  applied  them.       I^aw- 

Rep.    823;    Cox,   Manual,    695;    23  rence  Mfg.  Co.  v.  Tennessee  Mfg. 

Blatchf.      46;       Schumacher        v.  Co.,  31   Fed.  Rep.   776;    138   U.   S. 

Schwenke   (2),  36  Oif.  Gaz.  457.  537;    Oldham  v.  James,  13  Ir.  Ch. 

30— Re  Palmer,  L.  R.  21  Ch.  D.  393;    14  Ibid.  81;   Bloss  v.  Bloom- 

47;    Bodega  Co.    (Ltd.)    v.  Owens,  er,   23   Barb.   604;    Cox,  200;    Sam- 

23  L.   R.   Ir.  371;    Wolfe  v.  Lang,  uel  v.  Berger,  24  Barb.  163;   Cox, 

13  Vict.  L.  R.  752;  Wolfe  v.  Alsop  178;   Rodgers  v.  Philp,  1  Off.  Gaz. 

(2),  12  Vict  L.  R.  (E.),  421;  Lewis  29;  Re  Tolle,  2  Off.  Gaz.  415. 

V.  Klapproth,  11  Vict.  L.  R.   (E.),  32— Marshall     v.     Pinkham,     52 

214.  Wis.  572;   Price  &  Steuart,  497. 


§  152]  ACTIONS    AT    LAW.  355 

which  have  proved  ineffective  in  equity,  many  of  which 
would  doubtless  be  adequate  at  law. 

§  152.  Damages.— The  courts  of  the  United  States 
have  signally  failed  to  agi-ee  ui)on  any  fixed  rule  as  to 
the  measure  of  damages  in  actions  at  law  for  the  in- 
fringement of  trademarks.  To  the  student  of  the  decis- 
ions the  only  apparent  cause  for  this  fact  lies  in  two 
practical  reasons.  The  first,  that  the  remedy  offered  by 
equity  is  more  complete.  The  second  is  that  much  of  the 
trademark  piracy,  of  this  countr}'-  at  least,  is  conducted 
by  insolvents,  who  offer  no  inducement  to  the  vigilant 
prosecution  which  should  be  visited  upon  them.  In  1846, 
in  the  United  States  circuit  court  for  the  district  of 
Massachusetts,  AVoodbury,  J.,  said:  *'In  a  case  like 
this  (an  action  of  trespass  on  the  case  for  trademark  in- 
fringement), if  in  any,  no  reason  exists  for  giving 
greater  damages  than  have  actually  been  sustained,  or 
what  have  been  called  compensatory.  There  is  nothing 
peculiarly  atrocious  in  the  conduct  of  the  defendant  to 
be  punished  by  damages,  and  in  no  other  way,  as  a  pub- 
lice  example,  considering  the  blamable  usages  which  ex- 
ist on  this  subject.  "^^  In  a  Missouri  case,  the  St.  Louis 
court  of  appeals,  by  Lewis,  P.  J.,  held  that  it  was  error 
in  the  trial  court  to  instruct  the  jury  that  they  might 
find  exemplary  damages  if  from  the  evidence  they  be- 
lieved that  the  acts  of  the  defendant  were  wilful  or  ma- 
licious. The  reasoning  of  the  court  is  that  *'If  the  plain- 
tiffs had  demanded  an  accounting  of  the  profits  made  by 
the  defendants,  on  the  equitable  ground  that  those  profits 
were  made  by  the  use  of  the  plaintiff's  property,  the  in- 
structions might  have  been  substantially  applicable."'* 

33 — Taylor  v.   Carpenter    (2),   2  had  been  directed  that  they  might 

Wood.  &  M.  1;  Cox,  32;   Fed.  Case  find  punitive  damages.  The  verdict 

No.  13785.    The  passage  quoted  is  was  not  disturbed. 

a    mere    dictum,    uttered    in    the  34 — Addington   v.   Cullinane,    28 

course  of  an  opinion  upon  a  mo-  Mo.  App.  238-241. 
tion  for  a  new  trial  where  a  jury 


356  HOPKINS   ON    TRADEMARKS.  [§152 

An  emineDt  text-writer  thus  states  the  rule:  "The 
jury  are  to  give  actual  damages  which  the  plaintiff  has 
sustained— not  vindictive  or  speculative  damages,  but 
such  as  his  proof  has  shown  to  their  satisfaction  he  has 
actually  sustained  by  the  infringement."^^ 

To  the  author's  mind  the  better  rule  is  announced  in 
the  case  of  Warner  v.  Roehr,  in  which  the  instructions  of 
Judge  Blodgett  to  a  jury  said  in  part:  ''In  cases  of  this 
character,  where  you  are  satisfied  from  the  proof  and 
from  the  admissions  in  the  case  tliat  the  fraud— the  in- 
tention to  defraud— is  at  the  bottom  of  the  matter,  .  . 
.  the  juiy  are  not  confined  to  the  exact  monetary  dam- 
ages, but  may  give  what  are  known  as  vindictive  or  ex- 
emplaiy  damages,  for  the  purpose  of  deterring  others 
from  embarking  in  the  same  scheme  of  fraud  and  decep- 
tion. "^^  It  is  not  to  be  doubted  that  this  doctrine  is 
more  reasonable  and  just,  and  better  adapted  to  protect 
society  from  the  ravages  of  trademark  infringers,  than 
the  rule  stated  in  Taylor  v.  Carpenter^'^  and  Addington 
V.  Cidlinane.^^  It  is  difficult  to  see  how  the  result  stated 
in  those  cases  has  been  attained.  They  are  wholly  with- 
out precedent  and  opposed  to  the  rule  of  damages  which 
obtained  at  common  law.  What  that  rule  was,  and  is, 
so  far  as  our  federal  courts  are  concerned,  is  nowhere 
more  clearly  stated  than  by  Mr.  Justice  Grier  in  an  opin- 
ion in  which  he  speaks  for  the  federal  supreme  court. 
He  says: 

''It  is  a  well-established  principle  of  the  common  law 
that  in  actions  of  trespass  and  all  actions  on  the  case  for 
torts  a  jury  may  inflict  what  are  called  exemplary,  puni- 
tive or  vindictive  damages  upon  a  defendant,  having  in 
view  the  enormity  of  his  offense  rather  than  the  mea- 

35— Sutherland,     Damages,     (2d  36— Warner  v.  Roehr,  Fed.  Case 

ed.),   vol.    Ill,    sec.    1202.        Citing  No.  17189A. 

Ransom   v.   Mayor,  1   Fisher,   252;  37 — Supra. 

Parker  v.  Hulme,  1  Fisher,  44;  Ad-  38 — Supra. 
dington  v.  Cullinane,  28  Mo.  App. 
238. 


§  152]  ACTIONS    AT    LAW.  357 

sure  of  compensation  to  the  plaintiff.  We  are  aware 
that  the  propriety  of  this  doctrine  has  been  questioned 
by  some  writers;  but  if  repeated  judicial  decisions  for 
more  than  a  century  are  to  be  received  as  the  best  ex- 
position of  what  the  law  is,  the  question  will  not  admit 
of  argument.  By  the  common  as  well  as  by  statute  law 
men  are  often  punished  for  aggravated  misconduct  or 
lawless  acts  by  means  of  a  civil  action,  and  the  damages, 
inflicted  by  way  of  penalty  or  punishment,  given  to  the 
-party  injured.  In  many  civil  actions,  such  as  libel,  slan- 
der, seduction,  etc.,  the  wrong  done  to  the  i)laiutiff  is  in- 
capable of  being  measured  by  a  money  standard;  and  the 
damages  assessed  depend  on  the  circumstances,  showing 
the  degree  of  moral  turjDitude  or  atrocit}^  of  the  defend- 
ant's conduct,  and  may  properly  be  termed  exemplary 
or  vindictive  rather  than  compensatory. 

''In  actions  of  trespass  where  the  injury  has  been  wan- 
ton and  malicious,  or  gross  and  outrageous,  courts  per- 
mit juries  to  add  to  the  measured  comjiensation  of  the 
plaintiff  which  he  would  have  been  entitled  to  recover, 
had  the  injuiy  been  inflicted  without  design  or  intention, 
something  further  by  way  of  punishment  or  example, 
which  has  sometimes  been  called  'smart  money,'  This 
has  always  been  left  to  the  discretion  of  the  jury,  as  the 
degree  of  punishment  to  be  thus  inflicted  must  depend 
on  the  peculiar  circumstances  of  each  case."^^ 

Judge  Thayer  has  said:  "Punitive  damages  may  be 
awarded  when  a  wrongful  act  is  done  wilfully,  in  a  wan- 
ton or  oppressive  manner,  or  even  when  it  is  done  reck- 
lessly—that is  to  say,  in  open  disregard  of  one's  civil 
obligations  and  of  the  rights  of  others,"**^ 

We  find  the  rule  sanctioned  and  reaffinned  repeatedly 
by  the  supreme  court   of  the  United  States.*^     It  has 

39 — Day  v.  Woodworth,  54  U.  S.  40 — Fotheringham     v.      Express 

(13  Howard),  363,  371.   See  Press  Co.,  36  Fed.  Rep.  252,  253. 

Pub.  Co.  V.  Monroe,  73  Fed.  Rep.  41— Philadelphia   R.    R.     Co.    t. 

196.  201,  Quigley.    G2    U.    S.    (21    Howard), 


358  HOPKINS   ON    TRADEMARKS.  [§  152 

been  the  doctrine  adhered  to  by  that  court  ever  since 
Mr.  Justice  Story  in  a  case  of  marine  tort  spoke  of  ex- 
emplary damages  as  *'the  proper  punishment  which  be- 
longs to  such  lawless  misconduct.  "^^  It  is  manifest  that 
in  a  case  of  deliberate  counterfeiting  of  a  trademark 
there  should  be  a  recovery  of  punitive  damages,  or  at 
least  an  oi^portunity  given  the  jury  to  assess  punitive 
damages. 

As  to  the  award  of  actual  damages  at  law,  it  has  been 
held  that  nominal  damages  will  be  awarded  where  a 
fiTidulent  intent  is  shown,  even  though  no  specific  injury 
is  pleaded  or  proven.^^  The  St.  Louis  court  of  appeals 
has  said,  by  Bakewell,  J.,  in  an  action  of  deceit  based 
upon  trademark  infringement:  ''As  to  the  damages,  the 
facts  present  a  case  of  fraud  on  plaintiff  and  violation  of 
his  rights  for  which  the  action  lies  without  proof  of  spe- 
cific damages.  And  the  damage  was  not  confined  to  the 
loss  of  such  actual  sales  as  could  be  specifically  shown 
to  be  lost,  but  the  jury  might  make  such  inferences  as 
to  the  loss  and  injury  sustained  by  plaintiff  as  they 
might  think  warranted  by  the  whole  evidence  in  the 
case."^*  Much  to  the  same  effect  is  the  holding  of  the 
Massachusetts  supreme  court.'*^ 

In  California  the  rule  of  assessing  damages  would 
seem  to  give  the  plaintiff  the  profits  made  by  the  defend- 

213;  Milwaukee  R.  R.  Co.  v.  Arms,  Rep.  941,  949;  Taylor  v.  Carpenter, 

91  U.  S.  487,  492;  Missouri  Pacific  11  Paige,  292;   2   Sandf.  603;    Cof- 

Railway  v.  Humes,  115  U.  S.  512,  feen   v.    Brunton,    4   McLean,   516, 

521;   Barry  v.  Edmunds,  116  U.  S.  520;  Fed  Case  No.  2946;  Blofield  v. 

550,  562;  Denver  Railway  V.  Harris,  Payne,    4    Barn.   &   Ad.    410,    411; 

122  U.  S.  597,  609.  Exemplary  dam-  Marsh  v.  Billings,  7  Cushing,  322. 

ages  may  be  allowed  even  where  331;  Conrad  v.  Brewing  Co.,  8  Mo. 

no  actual  damage  is  proven.  Press  App.   277,   285;    El    Modello   Cigar 

Publishing  Co.  v.  Monroe,  73  Fed.  Co.  v.  Gato,  25  Fla.  886,  915;  9  So. 

Rep.   196,  201.  Rep.  23. 

42 — The  Amiable   Nancy,   16   U.  44 — Conrad   v.   Brewing    Co.,    8 

S.   (3  Wheat.)  546,  558.  Mo.  App.  277,  285. 

43 — Le   Page   Co.  v.   Russia   Ce-  45 — Marsh  v.  Billings,  7  Cushing, 

ment  Co.,  2  C.  C.  A.  555,  51  Fed.  322,  332. 


§  152j  ACTIONS   AT    LAW.  359 

ant  in  his  sales  of  goods  bearing  the  infringing  mark.*® 
But  it  is  very  doubtful  if  that  course  is  proijer  in  an 
action  at  law.  Damages  were  the  appropriate,  and  in- 
deed the  only,  remedy  at  law,  while  the  account  of  prof- 
its was  peculiar  to  courts  of  equity.*^ 

Under  the  English  practice  a  custom  has  grown  up 
by  which  a  complainant  in  equity  may  pray  for  an  ac- 
count of  profits  and  an  inquiry  as  to  damages  (and  it  has 
been  held  in  Wisconsin  that  this  is  the  proper  course  in 
pleading),"*"  but  before  any  order  for  discovery  can  be 
made  he  must  elect  between  the  accounting  of  profits  and 
the  inquiry  of  damages.  He  cannot  have  both.'*''  As  said 
by  Cotton,  L.  J.,  in  the  English  court  of  appeal,  in  re- 
fusing discovery  asked  by  a  complainant  before  be  had 
elected  between  profits  and  damages :  "  At  the  time  when 
the  order  was  made,  the  plaintiff  had  not  elected  to 
waive  his  account  of  profits.  Would  it  then  l>e  right  to 
allow  the  plaintiff  to  get  a  jury  to  determine  what  dam- 
ages he  was  entitled  to  before  he  had  made  his  election 
between  damages  and  profits?  Should  the  jury  award 
him  a  large  sum  for  damages,  he  would  probably  accept 
it ;  but  if  they  gave  him  a  small  sum  only,  then  he  might 
say  *No,  I  would  rather  have  an  account  of  profits,  as 
I  see  by  the  defendant's  books  that  he  has  made  a  much 
larger  sum.'  "°^ 

It  would  seem  that  the  damages  at  law  must  be  based 
upon  the  injuiy  sustained  by  the  complainant  by  loss  of 
sales  and  injury  to  the  reputation  of  his  trademark.  Evi- 
dence of  the  extent  of  the  defendant's  sales  may  be 
proper,^^  but  only  as  proof  of  injury  to  the  complainant, 

46 — Graham    v.    Plate,     40     Cal.  49— Neilson  v.  Betts,  L.  R.  5  H. 

593.  598.  L.  R.   1. 

47 — Sebastian,  Trademarks    (4th  50 — Fennessy  v.  Clark,  L.  R.  37 

ed.).  p.  232.  Ch.  D.  184,  187. 

48— Leidersdorf  v.  Flint   (2),  50  51— Le   Page    Co.    v.    Russia   Ce- 

Wis.  401.  ment  Co.,  2  C.  C.  A.  555;   51  Fed. 

Rep.  941,  949:   17  L.  R.  A.  354. 


360  HOPKINS   ON    TRADEMARKS.  [§  152 

and  not  with  a  view  to  measuring  the  plaintiff's  dam- 
ages by  the  defendant's  profits. 

Of  course  the  fact  that  the  defendant  has  discontin- 
ued his  infringement  is  no  defense  to  an  action  of  dam- 
ages,^- which  would  be  barred  only  by  the  operation 
of  the  statute  of  limitations.  It  is  comj^etent  to  show 
that  plaintiff's  sales  have  fallen  off  because  of  the  in- 
fringement.^^ 

A  Canadian  decision  held  that  damages  could  not  be 
recovered  for  the  sale  of  a  second-hand  stove  to  which 
a  second  manufacturer's  name-jDlate  had  been  added, 
where  the  plate  was  put  on  by  an  employee  without  the 
employer's  knowledge  and  the  purchaser  was  informed 
of  the  real  manufacture  of  the  stove.^^ 

52 — Lemoine  v.  Gauton,  2  E.  D.  defendant's  infringement.  Whether 

Smith,  343;  Ck)x,  142;  Seb.  125.  the  latter  is  the  cause  of  the  for- 

53 — Shaw  V.  Pilling,  175  Pa.  St.  mer   is    a   question    for   the   jury. 

78,   84.     It   is   competent   to   show  Ibid. 

that    a    diminution    of    plaintiff's  54 — Chapleau     v.     Laporte,     16 

sales  occurred   concurrently    with  Rap.  Jud.  Que.  C.  S.  189. 


CHAPTER  XIII. 

THE  ACTION  IN  EQUITY. 

§  153.  The  basis  of  equitable  jurisdiction.— Lord  West- 
bury  said:  " Imijositiou  on  the  public  occasioned  by  one 
man  selling  his  goods  as  the  goods  of  another  cannot 
be  the  ground  of  private  action  or  suit.  In  the  language 
of  Lord  Thurlow  in  Webster  v.  Webster,^  'The 
fraud  upon  the  public  is  no  ground  for  the  plaintiff 
coming  into  court.'  It  is,  indeed,  true,  that,  unless  the 
mark  used  by  the  defendant  be  applied  by  him  to  the 
same  kind  of  goods  as  the  goods  of  the  plaintiff,  and 
be  in  itself  such  that  it  may  be  and  is  mistaken  in  the 
market  for  the  trademark  of  the  plaintiff,  the  court  can- 
not interfere,  because  there  is  no  invasion  of  the  plain- 
tiff's right;  and  thus  the  mistake  of  the  buyers  in  the 
market,  under  whicli  they,  in  fact,  take  the  defendant's 
goods  as  the  goods  of  the  plaintiff,  that  is  to  say,  im- 
position on  the  public,  becomes  the  test  of  the  property 
in  the  trademark  having  been  invaded,  and  not  the 
ground  on  which  the  court  rests  its  jurisdiction.  "^ 

In  quoting  the  extract  given  above,  Vice  Chancellor 
Van  Vleet  has  said:  "The  rule  as  thus  stated  I  under- 
stand to  be  the  established  doctrine  now  in  force  on  this 
subject  both  in  this  country  and  in  England."^ 

In  the  early  English  practice  the  chancellor  had  power 
to  refuse  or  postpone  the  application  of  equitable  reme- 

1—3  Swanst.  490.  Ky.  73,  91;  Liggett  &  Myers  Tobac- 

2 — Leather  Cloth  Co.  v.  Ameri-  co  Co.  v.   Sam  Reid  Tobacco  Co., 

can  Leather  Cloth  Co.,  4  DeG.  J.  104  Mo.  53,  60;  McLean  v.  Fleming, 

&  S.  137,  141.  96  U.  S.  245.  251;  Shaver  v.  Shaver. 

3 — Schneider  v.  Williams,  44  N.  54     Iowa,    208,     209;     Barrows    v. 

J.  Eq.   391,  393.     To  the  same  ef-  Knight.  6  R.  I.  434,  438;   Handy  v. 

feet   see   Weener   v.   Brayton,    152  Commander,  49  La.  Ann.  1119. 

Mass.  101,  103 ;  Avery  v.  Meikle,  81 

361 


362  HOPKINS   ON    TRADEMARKS.  [§  153 

dies  in  trademark  cases  until  the  title  to  the  trademark 
had  been  determined  in  a  court  of  law.  This  practice 
continued  until  November  1,  1862,  when  the  "Chancery 
Regulation  Act,  1862,"^  went  into  effect.  The  first  sec- 
tion of  that  act  provides  that  '*In  all  cases  in  which  any 
relief  or  remedy  within  the  jurisdiction  of  the  said 
courts  of  chancery  respectively  is  or  shall  be  sought  in 
any  cause  or  matter  instituted  or  pending  in  either  of 
said  courts,  and  whether  the  title  to  such  relief  or  rem- 
edy be  or  be  not  incident  to  or  dependent  upon  a  legal 
right,  every  question  of  law  or  fact,  cognizable  in  a  court 
of  common  law,  on  the  determination  of  which  the  title 
to  such  relief  or  remedy  depends,  shall  be  determined 
by  or  before  the  same  court." 

It  is  important  to  bear  this  enactment  in  mind  in  ex- 
amining the  earlier  English  trademark  cases,  as  it  ex- 
plains the  many  failures  of  equity  to  act,  or  the  defer- 
ring of  relief  by  injunction  until  the  determination  of  the 
right  to  the  use  of  the  trademark  by  trial  at  law. 

Equity  first  extended  its  beneficent  protection  to  the 
owners  of  trademarks  because  of  the  inadequacy  of  the 
remedy  at  law.  This  inadequacy  arose  from  the  absence 
of  the  power  in  courts  of  law  to  act  in  personam— the 
injunctive  power.  But  there  were  other  reasons  why 
cognizance  of  trademark  causes  belonged  peculiarly  to 
equity.  Prominent  among  these  was  the  power  of  the 
chancellor  in  granting  discovery— the  right  to  discovery 
being,  as  Mr.  Bispham  says,  one  of  the  peculiar  advan- 
tages of  a  complainant  in  equity,  enjoyed  by  him  in 
every  case  in  which  he  was  entitled  to  come  into  chan- 
cery, either  for  the  purpose  of  asserting  an  equitable  title, 
or  setting  up  an  equitable  right  or  applying  an  equit- 
able remedy;''  though  the  right  was  always  conditioned 
by  the  necessary  restriction  that  the  person  brought  in 

4—25  and  26  Victoria,  c.  42,  p.  5— Bispham,  Equity  (4th  ed.), 
154.  p.  600,  sec.  557. 


§  153]  THE    ACTION    IN    EQUITY.  363 

on  discovery  need  not  disclose  matters  tending  to  in- 
criminate him  or  expose  him  to  penalty  or  forfeiture. 
And  there  was  yet  another  reason  why  this  litigation 
found  its  way  to  the  chancellor.  One  of  the  most  ancient 
forms  of  action  at  the  common  law  was  the  action  of  ac- 
count. "But,"  in  the  words  of  Mr.  Justice  Story,  *'the 
modes  of  proceeding  in  that  action,  although  aided  from 
time  to  time  by  statutable  provisions,  were  found  so 
very  dilatory,  inconvenient  and  unsatisfactoiy,  that  as 
soon  as  courts  of  equity  began  to  assume  jurisdiction 
in  matters  of  account,  as  they  did  at  a  very  early  per- 
iod, the  remedy  at  law  began  to  decline;  and  although 
some  efforts  have  been  made  in  modern  times  to  resusci- 
tate it,  it  has  in  England  fallen  into  almost  total  dis- 
use."^ So,  when  it  became  apparent  that  an  account  of 
profits  must  be  sought  as,  at  least,  the  basis  of  a  proper 
money  judgment  against  an  infringer,  the  parties  liti- 
gant were  forced  to  enter  the  domain  of  equity.  But, 
above  all,  there  was  that  power  in  equity  described  by 
Blackstone  as  the  power  **to  detect  latent  frauds  and 
concealments,  which  the  process  of  the  courts  of  law  is 
not  adapted  to  reach.  "^  While  not  exclusive  of  the 
courts  of  law,  the  courts  of  equity  had  original,  inde- 
pendent and  inherent  jurisdiction  to  relieve  against  ev- 
ery species  of  fraud.^ 

The  remedy  sought  governs  largely  the  question  of 
jurisdiction  in  equity.  If  a  mere  accounting  is  sought 
for,  it  is  insuflficient  to  vest  such  jurisdiction,  for  the 
account  must  be  incidental  to  some  other  equitable  re- 
lief.^ Jurisdiction  in  equity  will  not  attach  for  discov- 
ery simply,  except  in  aid  of  a  suit  at  law;  the  party  ap- 


6 — story,  Equity    Jurisprudence  8 — Kerr,     Fraud     and     Mistake 

(13th   ed.),  sec.  442.  (Bump's  ed.),  p.   43. 

7 — 1    Blackstone,   Commentaries,  9 — Root  v.   Railway  Co.   105   U. 

92.  S.  189. 


364  HOPKINS   ON    TRADEMARKS.  [§  154 

plying    must    invoke     some     other    distinct    equitable 
ground.^  ° 

§  154.  The  bill  in  equity.— The  bill  for  an  infringe- 
ment of  a  trademark  or  unfair  competition  properly  con- 
sists of  six  parts: 

1.  The  title  of  the  court. 

2.  The  introduction. 

3.  The  statement. 

4.  The  prayer  for  relief. 

5.  The  interrogating  part. 

6.  The  prayer  for  process. 

By  the  twenty-first  federal  equity  rule,  the  plaintiff  is 
given  liberty  to  omit,  at  his  option,  the  jurisdiction 
clause  (i.  e.,  that  the  acts  complained  of  are  contrary  to 
equity,  and  that  the  complainant  is  without  any  remedy 
at  law),  the  charging  part  of  the  bill,  setting  forth  the 
matters  or  excuses  which  the  defendant  is  supposed  to 
intend  to  set  up  by  way  of  defeuse  to  the  bill,  and  the 
common  confederacy  clause.  The  title  of  the  court  is 
given  substantially  as  indicated  in  the  preceding  sec- 
tion on  declarations  at  law,  and  rule  20  of  the  federal 
equity  rules  prescribes  the  form  of  the  introductory  part, 
which  is  a  formal  address  to  the  judges  of  the  court  in 
which  the  bill  is  filed,  together  with  the  names  and  aver- 
ments of  the  citizenship  of  the  parties. 

The  stating  part  of  the  bill  should  show:  (1)  The 
ownership  of  the  trademark,  describing  it  and  the  mode 
of  its  application  to  merchandise.  (2)  The  registration 
of  that  trademark  under  the  act  (if  registered),  and  the 
value  of  the  trademark.  (3)  The  facts  in  relation  to  the 
infringement  of  the  trademark  by  the  respondent.  -This 
part  of  the  bill  differs  from  the  corresponding  part  of 
the  declaration  at  law  in  this,  that  it  need  not  be  averred 
that  the  defendant  had  guilty  knowledge,^  ^  although  that 

10— Lord  V.  Whitehead  &  Ather-  11— McLean  v.  Fleming,  96  U.  S. 
ton  Machine  Co.,  24  Fed.  Rep.  801.     245. 


§  154]  THE    ACTION    IX    EQUITY.  365 

fact  should  be  averred  where  it  is  true.  ^Vhere  profits 
are  sought  to  be  recovered  there  should  be  a  direct  aver- 
ment that  such  profits  have  been  realized  by  the  defend- 
ant on  account  of  the  infringement. 

In  every  case  where  the  value  of  the  complainant's 
trademark  is  over  two  thousand  dollars,  that  fact  slioukl 
be  pleaded,' 2  as  a  jurisdictional  safeguard,  indei)eudent 
of  the  fact  of  registration  under  the  act  of  congress.  A 
matter  of  i)aramount  importance  where  the  parties  are 
citizens  of  the  same  state  is  an  averment  that  the  com- 
plainant uses  his  trademark  in  interstate  commerce 
or  commerce  with  foreign  nations  or  with  the  Indian 
tribes,'^  and  under  the  act  of  1881  it  had  to  be  averred 
and  proven  in  such  a  case  that  the  defendant  had  used 
the  infringement  in  commerce  with  foreign  nations  or 
with  the  Indian  tribes.'^  Where  the  parties  are  of  di- 
verse citizenship  no  such  averment  is  necessary.^ ^  What- 
ever allegations  are  essential  must  be  made  positively 
and  not  on  information  and  belief.^^ 

The  prayer  for  relief  should  be  both  special  and  gen- 
eralj  under  the  directions  given  in  the  twenty-first  fed- 
eral equity  rule.  The  special  i^ortion  of  the  i)rayer 
should  ask  for  a  preliminary  injunction  (if  it  is  desired), 
a  perpetual  injunction,  for  an  account  of  the  defend- 
ant's profits,  and  for  an  assessment  of  the  damages  sus- 
tained by  the  complainant  by  reason  of  the  injuries  he 
has    sustained    through   the    loss    of   reputation    of   his 

12 — Glen  Cove  Mfg.  Co.  v.  Lude-  Rep.  818;  Schumacher  v.  Schwenke 

ling,  22  Fed.  Rep.   823.     A  bill  is  (2),   36  Off.   Gaz.   457;    Gravely  v. 

sufficient  in  this  regard  which  re-  Gravely,  42  Fed.  Rep.  265. 

cites  that  "the  amount  in  contro-  14 — Gravely  v.  Gravely,  42  Fed. 

versy  exceeds  the   sum  of   $2000."  Rep.  265;    52  Off.  Gaz.  1538;   War- 

Griggs,  Cooper  &  Co.  v.  Erie  Pre-  ner  v.  Searle  &  Hereth  Co.,  191  U. 

serving  Co.,  131  Fed.  Rep.  359,  360.  S.  195. 

13 — Ryder  v.  Holt,  128  U.  S.  525;  15 — Hennessy  v.  Braunschweiger 

Luyties  v.  Hollender   (1),  21  Fed.  &  Co.,  89  Fed.  Rep.  669. 

Rep.    281,   22    Blatchf.    413;    Schu-  16— Gaines  &  Co.  v.  Sroufe,  117 

macher  v.   Schwenke   (1),  26  Fed.  Fed.  Rep.  965. 


366 


HOPKINS   ON    TRADEMARKS. 


§154 


trademark  or  otherwise.  A  bill  is  not  demurrable  on  the 
ground  that  it  prays  for  damages  in  addition  to  profits, 
because  both  can  be  recovered  where  fraudulent  intent 
is  established.^'  But  punitive  or  exemplary  damages 
should  not  be  prayed  for,  as  they  cannot  be  assessed  in 
equity.i«  .  Where  the  bill  charges  the  infringement  of  a 
registered  mark  the  prayer  should  ask  for  an  increase 
of  the  actual  damages  found,  as  provided  in  §  19  of  the 
act  of  1905. 

The  prayer  for  general  relief  should  be  in  the  form 
usual  in  equity  pleading.^  ^ 


17— El  Modello  Cigar  Co.  v.  Gato, 
25  Fla.  886,  915;  7  So.  Rep.  23; 
Benkert  v.  Feder,  34  Fed.  Rep.  534. 

18 — Hennessy  v.  Wilmerding- 
Loewe  Co.,  103  Fed.  Rep.  90. 

19 — A  bill  to  enjoin  unfair  com- 
petition must  expressly  charge  that 
the  defendant  has  attempted  or  in- 
tended to  practice  fraud  upon  the 
public.  Lamont  v.  Leedy,  88  Fed. 
Rep.  72,  74.  But  this  rule  is  hardly 
broad  enough.  The  better  doctrine 
would  seem  to  be  that  the  bill  need 
only  charge  that  the  defendant's 
merchandise  is  calculated  to  de- 
ceive the  public.  Judge  Lacombe, 
referring  to  the  practice  of  the 
federal  courts  in  cases  of  unfair 
trade,  has  said:  "Nor  do  these 
courts  require  specific  proof  of 
purchases  by  individuals  actually 
deceived,  when  the  labels  them- 
selves show  an  attempt  at  decep- 
tion which  appears  to  be  well  cal- 
culated to  deceive."  Collinsplatt 
v.  Finlayson,  88  Fed.  Rep.  693.  And 
the  same  learned  court  indicates 
the  same  rule  in  Burnett  v.  Hahn, 
88  Fed.  Rep.  694. 

A  bill  to  enjoin  the  manufactur- 
er or  vendor  of  spurious  labels 
must   contain    an    express   charge 


that  the  defendant  is  actually  en- 
gaged in  assisting  third  persons 
to  palm  off  their  goods  upon  the 
public  as  the  goods  of  the  com- 
plainant, or  a  substantially  equiva- 
lent averment.  De  Kuyper  v.  Wit- 
teman,  23  Fed.  Rep.  871;  Hen- 
nessy v.  Herrmann,  89  Fed.  Rep. 
669. 

A  bill  to  enjoin  the  infringe- 
ment of  a  technical  trademark 
must  set  up  facts  showing  an  ex- 
clusive right  to  the  use  of  the 
mark  in  the  plaintiff.  He  "must 
recover  upon  the  strength  of  his 
own  title,  and  not  upon  the  weak- 
ness of  the  defendant's."  Brown, 
J.,  in  O'Rourke  v.  Central  City 
Soap  Co.,  26  Fed.  Rep.  576-579. 

Improper  joinder  of  causes  of 
action. — A  bill  is  multifarious  that 
joins  with  a  charge  of  unfair  com- 
petition by  the  use  of  a  trade- 
name a  claim  for  damages  under 
the  Sherman  anti-trust  act  of  July 
2,  1890.  Block  V.  Standard  Dis- 
tilling &  Distributing  Co.,  95  Fed. 
Rep.  978. 

A  bill  is  multifarious  that  joins 
with  a  charge  of  unfair  competi- 
tion (by  passing  off  the  defend- 
ant's goods  in  unmarked  packages 


§  154]  THE    ACTION    IN    EQUITY.  367 

The  form  to  be  used  in  the  interrogating  part  of  the 
bill  is  prescribed  by. the  forty-third  federal  e(iuity  rule. 
Kule  41  provides  that  the  interrogatories  be  separated 
and  numbered  consecutively,  and  the  interrogatories 
which  each  defendant  is  required  to  answer  must  be 
specified  in  a  note  at  the  foot  of  the  bill.  And  that  rule 
further  provides  that  where  the  complainant  in  his  bill 
waives  an  answer  under  oath,  or  only  requires  an  answer 
under  oath  with  regard  to  certain  specified  interrogato- 
ries, the  answer  of  the  defendant,  though  under  oath,  ex- 
cept such  part  therof  as  shall  be  directly  responsive  to 
such  interrogatories,  shall  not  be  evidence  in  his  favor 
unless  the  cause  be  set  down  for  hearing  on  bill  and  an- 
swer only. 

The  twenty-third  federal  equity  rule  provides  that  the 
prayer  for  process  of  subpoena  shall  contain  the  names 
of  the  defendants  named  in  the  introductory  part  of  the 
bill,  and  if  any  of  them  are  known  to  be  infants  under 
age,  or  otherwise  under  guardianship,  shall  state  the 
fact  so  that  the  court  may  take  order  thereon,  as  justice 
may  require,  upon  the  return  of  the  process. 

The  bill  must  contain  the  signature  of  counsel,  as  pro- 
vided in  the  twenty-fourth  federal  equity  rule. 

Unless  a  preliminary  injunction  is  prayed  for  the  bill 
need  not  be  verified.^*^ 

These  suggestions  for  the  most  part  relate  to  bills  in 
the  federal  circuit  courts.  The  decisions  of  those  courts 
are  so  harmonious  that  the  great  bulk  of  the  trademark 
litigation  is  before  them.  As  to  the  state  courts,  refer- 
ence must  necessarily  be  had  to  the  local  forms  of  action 
(or  absence  of  such  forms)  created  by  legislative  en- 
actment 


as   and    for    plaintiff's    goods)     a         20 — Hughes  v.  Northern  Pacific 

charge  of  patent  infringement.  Ball  Ry.   Co.,   18   Fed.  Rep.    106,    110; 

&  Socket  Fastener  Co.  v.  Cohn,  90  Black  v.  Allen,  42  Fed.  Rep.  618, 

Fed.  Rep.  664.  623. 


368  '  HOPKINS   ON    TRADEMARKS.  [§  155 

Where  affirmative  relief  is  sought  by  a  defendant,  it 
should  be  prayed  for  in  a  cross-bill.-^ 

§  155.  The  defenses  in  equity.— All  defenses  good  in 
the  action  at  law  are  good  in  the  action  in  equity  except 
that  of  the  innocence  of  the  defendant  of  wrongful  in- 
tent. In  a  case  where  both  parties  have  the  right  to  use 
the  trademark,  the  defendant  will  be  enjoined  from  using 
the  words  "the  only  genuine"  in  connection  with  the 
trademark.-^  The  jolaintiff  must,  of  course,  be  actually 
entitled  to  use  the  trademark  having  applied  it  com- 
mercially. Thus  Sir  James  Clark's  application  to  re- 
strain one  Freeman  from  advertising  or  selling  pills 
under  the  name  of  "Sir  J.  Clark's  Consumption  Pills" 
was  denied  because  the  x)laintiff  was  not  engaged  in  the 
sale  of  i^ills.-^  The  plaintiff  may  not  be  entitled  to  re- 
cover because  of  his  not  having  an  exclusive  right  to  the 
mark;  or  because  he  has,  without  authority,  used  the 
words  "patent"  or  "patented"  in  connection  with  or 
as  a  part  of  what  he  claims  as  his  trademark.  Or  he 
may  have  made  fraudulent  representations  in  connection 
with  his  trademark  which  will  prevent  his  recovering 
the  relief  sought  for.    A  single  act  done  at  the  sugges- 

21 — Corbin  v.  E.  Taussig  &  Co.,  decided  in  favor  of  the  plaintiff 
132  Fed.  Rep.  662;  Hygienic  on  the  ground  that  he  had  a  prop- 
Fleeced  Underwear  Co.  v.  Way,  133  erty  in  his  own  name,"  i.  e.,  a 
Fed.  Rep.  245.  right  of  privacy,  which  involves  a 

22 — James  v.  James,  L.  R.  13  Eq.  discussion  which  it  v/ould  be  aside 

Cas.  421;  Cocks  v.  Chandler,  L.  R.  from   our   purpose   to   enter  upon 

11  Eq.  Cas.  446.  here.     Lord    Chancellor    Selborne 

23 — Clark  v.  Freeman,  11  Beav.  has   criticised    Clark   v.     Freeman 

112.     This  decision  is  criticised  in  from   another   standpoint,   saying: 

Maxwell  v.  Hogg,  L.  R.  2  Ch.  App.  "That  case  has  been  seldom  cited 

307;    but  it   is  manifestly  correct  but  to  be  disapproved.     Could  not 

in  principle,  considered  as  a  trade-  a  professional   man  be  injured   in 

name  case.      Lord   Justice  Cairns  his  profession  by  having  his  name 

says   (L.  R.  2  Ch.  App.  310):     "It  associated  with  a  quack  medicine?" 

has  always  appeared    to    me    that  Re  Riviere's  Trademark,  L.  R.  26 

Clark  V.  Freeman  might  have  been  Ch.  D.  53. 


§  155]  THE    ACTION    IN    EQUITY.  369 


tion  of  the  plaintiff's  agent  will  not  be  treated  as  an  in- 
fringement.-^ 

It  often  happens  that  the  defendant  may  plead  by  way 
of  mitigation  of  damages  or  so  as  to  avoid  his  liability 
for  an  acounting  or  for  costs.-^  Thus,  in  an  English 
case,  the  defendants  jjurcliased  five  hundred  cigarettes, 
worth  only  17s.  Gd.,  and  which  bore  a  mark  which  was 
an  infringement  of  the  plaintiff's.  The  court  granted 
the -application  for  injunction,  but  refused  to  order  the 
defendants  to  pay  costs,  saying  by  Sterling,  J.:  '*!  con- 
fess I  think  this  is  not  a  sort  of  action  that  ought  to 
be  encouraged.  If  joersons  find  a  trademark  is  being 
pirated,  surely  it  is  not  the  small  retailers  who  ought 
to  be  punished.  ...  I  cannot  think  that  it  is  the 
duty  of  the  court  in  every  case  in  which  a  small  dealer 
who  has  innocently  happened  to  purchase  a  small  quan- 
tity of  the  spurious  goods,  to  fix  him  with  the  costs  of  an 
action.  "2^  A  defendant  who  was  printing  labels  for 
a  third  party  did  not  know  that  the  labels  bore  counter- 
feits of  plaintiff's  trademarks.  On  being  notified  of  the 
fact  of  infringement,  defendant  offered  to  surrender  the 
lithograph  stone  and  promised  to  desist  from  further 
printing  the  counterfeit  labels.  The  court  adopted  the 
same  course  as  that  taken  by  the  English  court  in  the 
last  named  case— granted  an  injunction  but  at  com- 
plainant's costs.-'^  This  case  shows  that  it  is  not  wise 
to  notify  a  defendant  before  suing.  It  has  been  ex- 
pressly and  repeatedly  held  that  the  defendant  is  not 
entitled  to  notice,"^  and  it  is  related  by  Chitty,  J.,  that 

24— Hennessy  v.    Kennett,    Seb.  Guest,  9  R.  P.  C.  218;  L.  R.  (1892) 

556;    Gorham   Mfg.   Co.  v.  Emery-  1  Ch.  D.  630;  61  L.  J.  Ch.  242;  66 

Bird-Thayer  Co.,  92  Fed.  Rep.  774;  L.  T.  257;  40  W.  R.  364;  CartmeU, 

Hostetter   Co.   v.    Brunn,   107   Fed.  45. 
Rep.  707.  27 — Bass    v.    Guggenheimer,    69 

25— Guilhon  v.  Lindo,  9  Bos.  605;  Fed.  Rep.  271. 
Cox'   American   Trademark   Cases,        28 — Upmann  v.   Forester,   L.  R. 

295.  24   Ch.  D.   231;    52  L.   J.  Ch.   945; 

26— American     Tobacco     Co.     v.  49  L.  T.  122;  32  W.  R.  28. 
24 


370  HOPKINS   ON    TRADEMARKS.  [§  155 

when  that  very  learned  jurist,  the  late  Sir  G.  Jessel, 
master  of  the  rolls,  was  at  the  bar,  it  was  his  custom  to 
advise  his  clients  in  trademark  actions  not  to  give  any 
notice  but  to  move  at  once.-° 

These  suggestions  are  given  here  to  call  the  attention 
of  the  practitioner  whose  duty  is  to  defend  the  alleged 
infringer  to  the  very  serious  question  of  avoiding  costs. 

It  may  be  possible  to  defend  successfully  on  the  ground 
that,  although  the  plaintiff  has  applied  his  trademark  in 
commerce,  he  has  not  applied  it  to  the  same  character  or 
class  of  merchandise  as  that  to  which  the  defendant  is 
applying  it.  We  have  touched  upon  this  question  be- 
fore, but  a  more  extended  consideration  of  it  may  be  ad- 
visable. To  answer  the  question  of  whether  the  defend- 
ant's use  of  the  complainant's  trademark  is  such  an  un- 
lawful use  that  it  should  be  restrained,  ''the  extent  of 
the  owner's  property  in  a  trademark,  and  the  character 
of  the  act  which  is  held  to  injuriously  affect  his  prop- 
erty rights,  and  to  call  for  the  interposition  of  a  court 
of  equity,  must  be  ascertained.  .  .  .  The  deceit  of 
the  public  and  the  subsequent  injury  to  it  are  as  much 
to  be  regarded  by  a  court  of  equity  as  an  injury  to  a 
plaintiff's  business.  It  therefore  follows  that  the  right 
of  an  owner  of  a  trademark  is  not  a  right  to  its  ex- 
clusive use  everywhere  and  under  all  circumstances."^^ 
Thus,  an  iron  manufacturer  using  a  lion's  head  as  his 
trademark  cannot  enjoin  a  linen  manufacturer  from 
using  a  lion's  head  as  his  mark.^i  It  was  held  that 
''Fruit  Salt"  as  a  trademark  for  an  effervescing  drink, 
a  registered  mark,  might  be  interfered  with  by  the 
words  "Fruit  Salt"  designating  a  baking  powder.  In 
this  case  it  was  shown  that  the  "Fruit  Salt"  used  in 
■producing  the   effervescing  drink  had  been  used  as  a 

29— Upmann  v.   Forester,   L.   R.     Mfg.  Co.  v.  Read,  47  Fed.  Rep.  712- 
24  Ch.   D.   231-235.  714. 

30 — Shipman,     J.,     in    Celluloid         31— Ainsworth   v.   Walmsley,   35 

L.  J.  Ch.  352. 


§  155]  THE    ACTION    IN    EQUITY.  371 

baking  powder,  in  exceptional  cases ;  but  the  court  re- 
marked that  if  it  were  proposed  to  so  employ  the  words 
''Fiiiit  Salt"  that  **no  reasonable  person  could  sup- 
pose that  they  had  reference  to  the  appellant's  i>reijara- 
tion,  such  a  use  would  be  perfectly  unobjectionable.  For 
example,  I  cannot  conceive  any  one  imagining  that  a 
''Fioiit  Salt  Umbrella"  was  in  any  way  connected  with 
the  article  manufactured  by  Mr.  Eno  (the  effervescing 
drink). "^-  So  it  has  been  held  in  this  country  that  the 
word  ''Celluloid"  is  a  valid  trademark  as  applied  to 
articles  actually  composed  of  celluloid,^^  but  that  the  use 
of  tlie  word  "Celluloid"  to  designate  a  starch  is  not  an 
infringement,  because  celluloid  had  never  been  used  in 
making  starch  and  there  was  no  testimony  to  show  that 
the  plaintiff  had  intended  ever  to  use  it  in  making 
starch.  There  was  expert  testimony  to  the  effect  that 
it  was  highly  probable  that  a  method  might  be  devised 
by  which  celluloid  could  be  converted  into  a  starch-like 
body  fit  for  use  as  a  substitute  for  starch,  but  the  court 
held  this  statement  of  probabilities  "too  indefinite  to 
be  the  foundation  of  an  injunction."^*  The  whole  ques- 
tion depends  upon  how  closely  related  are  the  classes 
of  goods  to  which  the  complainant  and  respondent  apply 
the  mark.^^ 

The  other  defenses,  beside  those  thus  far  indicated, 
such  as  license  from  the  owner  or  his  co-proprietor  in 
the  mark,  delay,  acquiescence  or  abandonment,  have  been 
treated  in  connection  with  the  defenses  at  law.  But  it 
is  proper  to  note  here  that  where  the  complainant  has 

32 — Lord    Herschell   in    Eno    v.  How.  Pr.  297;  Carroll  v.  Ertheiler, 

Dunn,  U  R.  15  App.  Cas.  252,  260.  1  Fed.  Rep.  688;   Hecht  v.  Porter, 

33— Celluloid    Mfg.    Co.    v.     Cel-  9   Pac.   C.   L.   J.    569;     Osgood    v. 

lonite  Mfg.  Co.,  32  Fed.  Rep.  94.  Rockwood,  Fed.  Case  No.  10605.  11 

34— Celluloid   Mfg.   Co.   v.  Read,  Blatch.    310:    Smith    v.    Reynolds, 

47  Fed.  Rep.  712,  716.  Fed.   Case   No.    13098,    10   Blatchf. 

35— Collins     Co.     v.     Ames,     20  100;    13  Blatchf.  458;   Swift  &  Ca 

Blatchf.    542:    18    Fed.    Rep.    561;  v.  Groff.  114  Fed.  Rep.  605. 
Amoskeag  Mfg.  Co.  v.   Garner,  54 


372  HOPKINS  ON   TRADEMARKS.  [§  155 

been  guilty  of  serious  laches  liis  relief  will  be  limited 
to  the  injunction,  and  an  accounting  will  be  refused."" 

AMiere  the  bill  of  complaint  makes  profert  of  the 
plaintiff's  trademark  and  exhibits  the  alleged  infringe- 
ment, a  demurrer  will  be  sustained  if  an  inspection  of 
the  exhibits  satisfies  the  court  that  there  is  no  infringe- 
ment.^^ 

AYliere  the  defendant  undertakes  to  defend  by  attack- 
ing the  complainant's  title  to  the  mark  and  fails,  the 
Supreme  Court  of  Louisiana  has  held  that  he  should 
be  treated  as  a  wanton  trespasser.^® 

But  the  courts  are  not  inclined  to  sustain  demurrers 
upon  the  ground  that  the  plaintiff's  mark  is  not  a  valid 
technical  trademark,  where  the  bill  contains  the  specific 
charge  that  the  defendant  has,  by  its  conduct  in  the 
premises,  deceived  and  misled  the  public  into  buying  its 
goods  as  and  for  the  plaintiff's  goods.^^  A  defect  upon 
the  face  of  the  bill,  such  as  a  failure  to  show  title  to 
the  mark  in  a  complainant,  must  be  met  by  demurrer 
and  cannot  be  raised  by  a  plea.^^ 

There  are  a  number  of  lines  of  defense  which  have 
been  ineffective.  Among  them  are  to  be  particularly 
noted  the  following: 

1.  Infancy."*^ 

2.  The  registration  of  defendant's  mark,  because  reg- 

istration is  only  prima  facie  evidence  of  owner- 
ship.'*2 

3.  Laches  or  delay,  except  in  unusual  cases.^^ 

36— Holt    V.    Menendez,    23    Fed.  40— Hostetter  Co.  v.  E.  G.  Lyons 

Rep.  869,  871;   N.  K.  Fairbank  Co.  Co.,  99  Fed.  Rep.  734. 

V.  Luckel,  King  &  Cake  Soap  Co.,  41— Chubb  v.  Griffiths,  35  Beav. 

106  Fed.  Rep.  498.  127. 

37 — Handy    v.    Commander,    49  42 — Glen  Cove  Mfg.  Co.  v.  Ludel- 

La.  Ann.   1119,  22  So.  Rep.  230.  ing,  22  Fed.  Rep.  823;   23  Blatchf. 

38— Collins  Chemical  Co.  v.  Cap-  46;  Bass,  Ratcliff  &  Gretton  (Ltd.) 

ital  City  Mfg.  Co.,  42  Fed.  Rep.  64.  v.   Feigenspan,   96   Fed.   Rep.   206, 

39— Putnam  Nail  Co.  v.  Bennett,  209,  212. 

43  Fed.  Rep.  800.  43— McLean  v.  Fleming,  96  U.  S. 


§155] 


THE    ACTION    IN    EQUITY. 


373 


4.  Showing  that  defendant  always  placed  his  own  ad- 

dress upon  his  goods,  in  conjunction  witli  the  in- 
fringing inark.^' 

5.  Showing  that  defendant  has  always  used  his  own 

name  or  initials  in  conjunction  with  the  infring- 
ing mark.    This  is  not,  of  itself,  a  good  defense.*^ 

C.  Showing  that  defendant  has  always  used  the  word 
"Improved"  in  addition  to  the  alleged  infringing 
words.^*^ 

7.  Showing   that   the   defendant's   goods   are   not   in- 
ferior in  quality  to  the  complainant's."*^ 

8.  Showing  that  the  goods  sold  are  goods  made  by 

the  complainant,  if  they  are  goods  to  which  the 
complainant  did  not  intend  the  mark  to  be  aj)- 
plied."**^ 


245;  Lee  v.  Haley,  L.  R.  5  Ch.  App. 
155.    See  ante,  §  75. 

44 — Gray  v.  Taper-Sleeve  Pulley 
Works,  16  Fed.  Rep.  436-442. 

45— Menendez  v.  Holt,  128  U.  S. 
521;  Battle  v.  Finlay,  50  Fed.  Rep. 
106;  N.  K.  Fairbank  Co.  v.  Central 
Lard  Co.  70  Off.  Gaz.  635;  64  Fed. 
Rep.  133;  Boardman  v.  Meriden 
Britannia  Co.,  35  Conn.  402;  Hier 
V.  Abrahams,  82  N.  Y.  519;  Fleisch- 
mann  v.  Schuckmann,  62  How.  Pr. 
92;  Lea  v.  Wolff,  15  Abb.  Pr.  N. 
S.  1;  Carroll  v.  Ertheiler,  1  Fed. 
Rep.  388;  Hegeman  v.  O'Byrne,  9 
Daly,  264;  Pratt's  Appeal,  117  Pa. 
St.  401;  Walter  Baker  &  Co.  v. 
Baker,  87  Fed.  Rep.  209 ;  Bass,  Rat- 
cliff  &  Gretton  (Ltd.)  v.  Feigen- 
span,  96  Fed.  Rep.  206-210;  Leon- 
ard V.  White's  Golden  Lubricator 
Co.,  38  Fed.  Rep.  922;  Gillott  v. 
Esterbrook,  47  Barb.  455;  Dunlap 
&  Co.  V.  Young,  74  N.  Y.  Supp.  184. 

46 — Russia  Cement  Co.  v.  Le- 
Page,  147  Mass.  206;  17  N.  E.  Rep. 


304;  Gage  v.  Canada  Pub.  Co.,  11 
Can.  S.  C.  R.  306;  Improved  Fig 
Syrup  Co.  v.  California  Fig  Syrup 
Co.,  54  Fed.  Rep.  175;  4  C.  C.  A. 
264. 

47— Cleveland  Stone  Co.  v.  Wal- 
lace, 52  Fed.  Rep.  431-436;  Taylor 
V.  Carpenter  (3),  11  Paige,  292; 
Coats  V.  Holbrook,  2  Sandf.  Ch. 
586;  Partridge  v.  Menck,  2  Sandf. 
Ch.  622;  Cook  v.  Starkweather,  13 
Abb.  Pr.  N.  S.  392;  Shaver  v.  Shav- 
er, 54  Iowa,  208;  Coffeen  v.  Brun- 
ton,  5  McLean,  256;  Gillott  v.  Es- 
terbrook, 47  Barb.  455;  48  N.  Y. 
374;  Singer  Mfg.  Co.  v.  Loog  (3), 
L.  R.  8  App.  Cas.  15;  Edelsten  v. 
Edelsten,  1  DeG.  J  &  S.  185;  Blo- 
field  v.  Payne,  4  B.  &  Ad.  410. 

48 — Krauss  v.  Jos.  R.  Peebles' 
Sons  Co.,  58  Fed.  Rep.  585;  Hen- 
nessy  v.  White,  6  W.  W.  &  A'B. 
Eq.  216;  Hennessy  v.  Hogan,  6  W. 
W.  &  A'B.  Eq.  225;  Gillott  v.  Ket- 
tle, 3  Duer,  624;  Hennessy  v.  Ken- 
nett,  Seb.  556. 


374  THE    ACTION    IN    EQUITY.  [§  155 

9.  Showing  that  the  defendant  did  not  intend  to  sell 
the  goods  bearing  the  infringing  mark."*'^ 

10.  Showing    that    the    complainant's    mark   has    been 

used  by  others  without  his  knowledge,  consent  or 
acquiescence/''^  for  "a  trespasser  cannot  justify 
upon  the  ground  that  others  have  committed  like 
trespasses. '  '^^ 

11.  Showing   that   the   same   mark  has   been   used  by 

others  on  goods  of  another  class.^- 

12.  Showing  that  a  third  person  used  the  trademark 

prior  to  its  appropriation  by  the  complainant, 
when  that  third  person  has  been  refused  relief  in 
equity  against  infringers,  because  of  fraudulent 
representations  made  by  him  in  using  the  mark.^^ 

13.  Showing  that  the  infringing  act  was  done  by  the 

defendant's  servants,  agents  or  employees  with- 
out his  knowledge.^^ 

14.  Showing  that  defendant  partners  have  incorporated 

after  the  institution  of  the  suit.^^ 


49— Upmann   v.   Forester,   L.   R.  Walmsley,  L..  R.   1   Eq.   518;    Hall 

24  Ch.  D.  231;   Upmann  v.  Curry,  v.   Barrows,   4    DeG.   J.   &   S.    150; 

29  Sol.  J.  735.  George  v.  Smith,  52  Fed.  Rep.  830. 

50 — Cuervo  v.  Jacob  Henkell  Co.,        53 — Parlett  v.  Guggenhelmer,  67 

50   Fed.   Rep.   471;    Filley  v.   Fas-  Md.    542-544.    The     rights    of    the 

sett,  44  Mo.  173;  Cox,  530;  Taylor  third  party  had  been  so  adjudicated 

V.    Carpenter    (1),    3    Story,    458;  in   Palmer   v.    Harris,    60    Pa.    St. 

Cox,  14;    Seb.  78;   Ford  v.  Foster,  156. 
L.  R.  7  Ch.  App.  611.  54— Low  v.  Hart,  90  N.  Y.  457; 

51 — Actiengesellschaft  Vereinigte  Twentsche  Stoom  Bleekery  Goor  v. 

Ultramarin-Fabriken     v.     Amberg,  Ellinger,   26    W.   R.    70;    Tonge   v. 

48  C.  C.  A.  264,  109  Fed.  Rep.  151.  Ward,  21  L.  T.  N.  S.   480;    Atkin- 

Reversing  same  v.  same,  102  Fed.  son    v.    Atkinson,    85    L.    T.    Jour. 

Rep.  551.  229.     But  see  Leahy  v.  Glover,  10 

52— Celluloid  Mfg.  Co.  v.  Cellon-  R-  P-  C.  141.  where  a  single  sale 

ite  Mfg.  Co.,  32  Fed.  Rep.  94;  Col-  by  defendant's  clerk  was  held  in- 

man   v.    Crump,    70     N.     Y.     573;  sufficient  to  warrant  injunction. 
Hegeman  v.  O'Byrne,  9  Daly,  264;         55 — American  Fibre  Chamois  Co. 

Somerville  v.   Schembri,  L.   R.   12  v.  De  Lee,  67  Fed.  Rep.  329. 
App.    Cas.    453-457;    Ainsworth    v. 


§  155J  THE    ACTION    IN    EQUITY.  375 

15.  Showing  that  the  complainant  gave  the  defendant 

no  notice  of  his  intention  to  bring  suit.^" 

16.  Showing  that  a  proper  name  alleged  to  be  an  in- 

fringement is  the  name  of  a  i^erson  connected 
with  defendant's  business,  when  in  fact  such  per- 
son has  only  given  defendant  permission  to  use 
his  name  as  a  means  of  attracting  trade  from 
the  complainant,  in  pursuance  of  defendant's 
scheme  to  fraudulently  take  away  complainant's 
business.^^ 

17.  Showing  that  plaintiff  has  added  words,  figures  or 

designs,  such  as  a  coat-of-arms,  to  the  trademark 
as  registered.^** 

18.  Showing  that  the  complainant's  trademark  or  pack- 

age is  only  partially  copied  or  imitated  in  de- 
fendant's mark  or  package.^" 

56 — Coats  V.  Holbrook,  2  Sandf.  Meriden  Britannia  Co.   v.   Parker, 

Ch.  586;    Cox,  20;    Sawyer  v.  Kel-  39   Conn.   450;    12   Am.   Rep.   401; 

logg,  9  Fed.  Rep.  601-602;  Upmann  Garrett  v.  T.  H.  Garrett  &  Co.,  24 

V.  Forester,  L.   R.   24   Ch.   D.   231-  C.  C.  A.  173,  78  Fed.  Rep.  472;  Pha- 

235;  Cartmell,  331;  Upmann  v.  El-  Ion  v.  W^right,  5  Phila.   464;    Cox, 

kan,  L.  R.  12  Eq.  140;  L.  R.  7  Ch.  307;  Wolfe  v.  Barnett,  24  La.  Ann. 

App.   130;    Burgess  v.   Hately,    26  97;  13  Am.  Rep.  Ill;  Melachrino  v. 

Beav.  249;  Seb.  169;  Field  v.  Lew-  Melachrino  Cigarette  Co.,  4  R.  P. 

is,  Seton   (4th  ed.),  237;  Seb.  280;  C.    215;    Cartmell,    223;     Perks    v. 

Re  Kuhn,  53  L.  J.  Ch.  238;  Barrett  Hall,  W.  N.  1881,  p.  Ill;  Williams 

V.  Goom,  74  L.  T.  Jour.  388;   Fen-  v.  Johnson,  2  Bos.  1. 

nessy  v.  Day,  55  L.  T.  N.  S.  161;  58 — Melachrino     v.     Melachrino 

Siegert  v.  Lawrence,  11  Vic.  L.  R.  Cigarette  Co.,  4  R.  P.  C.  215;  Cart- 

47.     See,  contra,  Wallis  v.  Wallis,  mell,  223;   Newman  v.  Pinto,  4  R. 

4  Dr.  458;  Twentsche  Stoom  Bleek-  P.  C.  508;   57  L.  T.  N.  S.  31;   Cart- 

ery  Goor  v.  Ellinger,  26  W.  R.  70;  mell,  242;    Carroll  v.  Ertheiler,   1 

Chappell  V.   Davidson,  2  K.    &    J.  Fed.  Rep.  688-691. 

123;    Williams   v.   Osborne,    13    L.  59 — McCann  v.  Anthony,  21  Mo. 

T.  N.  S.  498;   Gorham  Mfg.  Co.  v.  App.  83;  Enoch  Morgan's  Sons  Co. 

Emery-Bird-Thayer  Dry  Goods  Co.,  v.  Edler,  Cox,  Manual,  714;  Taend- 

92  Fed.  Rep.  774-778.  sticksfabriks  Aktiebolaget    Vulcan 

57— Sawyer    v.    Kellogg,    7    Fed.  v.  Myers.  139  N.  Y.  364;   Pillsbury 

Rep.  720;   Price  &  Steuart,  493;   9  v.   Pillsbury-Washburn    Mills    Co., 

Fed.  Rep.  601;   Rogers  Mfg.  Co.  v.  12  C.  C.  A.  432,  64  Fed.  Rep.  841; 

Rogers  Mfg.  Co.,  11  Fed.  Rep.  495;  Centaur    Co.    v.    Killenberger,    87 

Williams  v.  Brooks,  50  Conn.  278;  Fed.  Rep.  725. 


376  HOPKINS   ON    TRADEMARKS.  [§  155 

As  by  the  use  of  but  one  of  several  words  composing 
the  plaintiff's  mark.^^ 

*'T]ie  reports  are  full  of  cases  where  bills  have  been 
sustained  for  the  infringement  of  one  of  several  words 
of  a  trademark."*'^ 

19.  Showing  that  complainant  has  been  guilty  of  mis- 
representation in  connection  with  his  use  of  the 
trademark,  where  that  misrepresentation  consists 
only  in  harmless  exaggeration  of  the  merits  of  his 
product    (puffing)  f-  or  in  purely  collateral  rep- 
resentation, as  by  newspaper  advertising  f^  or  in 
regard  to  the  size  of  packages  used  by  him,  where 
the  sizes  of  those  packages  are  the  ordinary  sizes 
known  to  the  trade,  the  capacity  of  which  is  gen- 
erally understood.^* 
Generally,  as  to  the  defense  that  the  complainant  has 
been   guilty   of  misrepresentation,   Judge   Sanborn  has 
said  ''the  principle  'that  he  who  comes  into  equity  must 
do  so  with  clean  hands'  is  familiar  and  indisputable. 
But  it  does  not  repel  all  sinners  from  courts  of  equity, 
nor  does  it  disqualify  any  complainant  from  obtaining 
relief  there  who  has  not  dealt  unjustly  in  the  very  trans- 
action  concerning   which   he    complains.      The   iniquity 
which  will  repel  him  must  have  an  immediate  and  neces- 
sary relation  to  the  equity  for  which  he  sues."*^^     Thus, 

60— Saxlehner  v.  Eisner  &  Men-  Pr.  421;  Cox,  232;  Metzler  v.  Wood, 

delson  Co.    (3),  179  U.   S.  19-33.  L.  R.  8  Ch.  D.  606;  Seb.  587;   Hol- 

61 — Mr.   Justice   Brown   in   Sax-  loway  v.  Holloway,  13  Beav.  209; 

lehner  v.  Eisner  &  Mendelson  Co.,  Seb.  106;  Ellis  v.  Zeilen,  42  Ga.  91. 

179  U.  S.  19,  33;  citing  Shrimpton  63— Curtis  v.  Bryan,  36  How.  Pr. 

V.   Laight,   18  Beav.   164;    Clement  33;  2  Daly,  212;  Cox,  434;  Seb.  291. 

V.   Maddick,   1   Giff.   98;    Hostetter  64— Hennessy    v.    Wheeler,     51 

V.  Vowinkle,  1  Dill.  329,  Fed.  Cas.  How  Pr.  457;  69  N.  Y.  271;  15  Alb. 

No.    6,714;    Morse    v.    Worrell,    10  L.  J.  454;   Seb.  483. 

Phila.    168,    9    Am.    L.    Rev.    368;  65— Shaver  v.  Heller  &  Merz  Co., 

Grillon   v.   Guenin,   Weekly  Notes  48  C.  C.  A.  48,  108  Fed.  Rep.  821, 

(1877),  14;  American  Grocer  Pub.  834.      Citing    Dering   v.     Earl     of 

Asso.  v.  Grocer  Pub.  Co.   25  Hun,  Winchelsea,   1   Cox,  Ch.   318,   319; 

398.  I^wis   &  Nelson's   Appeal,   67   Pa. 

62 — Comstock  v.  White,  18  How.  153,    166;    Bateman    v.    Fargason, 


§  155]  THE    ACTION    IN    EQUITY.  377 

the  use  of  the  word  "copyright"  in  connection  with  a 
tradename  when  no  copyright  actually  exists,  has  been 
held  not  to  disentitle  the  owner  from  relief  in  equity,**" 
and  so  of  statements  of  opinion  concerning  the  curative 
properties  of  a  medical  compound  to  which  the  trade- 
mark is  applied.*^^  But  the  statement  on  the  label  of  a 
small-pox  remedy,  **  cures  the  worst  cases  without  mark- 
ing," is  sufficient  to  disentitle  the  complainant  from  re- 
lief.«8 

20.  Showing  that  the  infringement  has  ceased.'''^ 

21.  Showing  that   the   complainant   has   made  a   third 

party  his  licensee  for  the  territorj^  in  which  the 
infringement  was  committed.'*^ 

22.  Showing  that  the  defendant  has  made  no  sales  of 

goods  bearing  the  infringing  mark,  where  it  ap- 
pears that  he  would  have  done  so  had  the  suit  not 
been  instituted.'^^ 
''Proof  of  injury  is  unnecessary  if  the  evidence  es- 
tablish the  fact  that  injuiy  will  result  unless  such  use 
(of  the  infringing  mark)   will  be  restrained. "^^     "The 
infringement  of  a  trademark  implies  injury."'"^ 

23.  Showing  that  the  defendant  is  merely  a  dealer  who 

has  i3urchased  from  the  originator  of  the  infringe- 
ment,'^"* or  merely  the  agent  of  another  in  the  sale 
of  the  infringing  goods.'^ 

4  Fed.  Rep.  32,  33.     To  the  same  70— Moxie    Nerve   Food     Co.     v. 

effect  see  Frazier  v.   Bowling,   18  Baurabach,   32  Fed.   Rep.   205. 

Ky.  L.  Rep.  1109,  39  S.  W.  Rep.  45.  71— Cuervo  v.  Landauer,  63  Fed. 

66 — Wormser  v.  Shayne,  11    111.  Rep.    1003;     McLean    v.    Fleming, 

App.  556.  96  U.  S.  252. 

67 — Newbro  v.  Undeland,      Neb.  72 — Maddox,    J.,    in    Brown    v. 

— ,  96  N.  W.  Rep,  635.  Braunstein,  83  N.  Y.  Supp.  1096. 

68 — Houchens    v.    Houchens,  95  73 — Thomas,   J.,   in   Lanahan   v. 

Md.  37,  51  Atl.  Rep.  822.  John  Kissel  &  Son,  135  Fed.  Rep. 

69— Frese  v.   Bachof,   Fed.   Case  899. 

No.  5110,  13  Blatchf.  234;   Burnett  74— Burnett   v.    Hahn,    88     Fed. 

v.  Hahn,  88  Fed.  Rep.  694;  Hutch-  Rep.  694. 

inson   v.   Blumberg,   51   Fed.   Rep.  75 — Walter  Baker  &  Co.  v.  San- 

829-831;  Clark  Thread  Co.  v.  Wm.  ders.  80  Fed.  Rep.  889.  26  C.  C.  A. 

Clark  Co.  (1),  55  N.  J.  Eq.  658,  37  220. 
Atl.  Rep.  599. 


378  HOPKINS   ON    TR.VDEMARKS.  [§  155 

24.  Showing   that   the   defendant   once  held   a   license 

from  the  plaintiff,  permitting  the  use  of  the  mark, 
when  that  license  has  been  revoked  for  failure  to 
pay  royalties  and  other  breaches  of  the  licensing 
contract.'^ '^ 

25.  Showing   that    there    has    been    an    adjudication 

against  the  plaintiff  in  a  court  of  a  foreign  coun- 
try. The  subject-matter,  in  cases  of  the  classes 
treated  in  this  work,  is  a  tort.  Such  subjects  are 
not  concluded  by  foreign  adjudications,  even  when 
the  acts  referred  to  are  the  same  identical  acts.*^"^ 

26.  Showing  that  the  defendant  was  insane  at  the  time 

of  the  commission  of  the  infringing  acts.'^^ 

27.  Showing  the  defendant's  innocence  of  guilty  knowl- 

edge or  fraudulent  intent.'^^ 

28.  Showing  that  defendant  has  used  plaintiff's  mark 

only  in  connection  with  matter  explanatory  of  its 
use  (as  where  the  plaintiff  marked  his  goods 
''Akron  Dental  Rubber"  and  defendant  marked 
his  as  "Non-Secret  Dental  Vulcanite,  made  ac- 
cording to  our  analysis  of  the  Akron  Dental  Rub- 
ber," the  words  ''Akron  Dental  Rubber"  being 
printed  in  red,  from  large  type),  where  the  added 
matter  is  a  mere  evasive  attempt  to  hide  the 
similarity.^*' 

29.  Showing  that  the  plaintiff  is  a  party  to  a  combination 

in  restraint  of  trade.*^^  "It  does  not  tend  to  foster 
monopoly  to  sustain  the  right,  if  one  has  acquired 
it,  to  the  exclusive  use  of  a  trademark.  "^^ 

76 — Martha  Washington    Cream-  fabriks  Aktiebolaget  Vulcan  v.  My- 

ery  Buttered  Flour  Co.  v.  Martien,  ers,  139  N.  Y.  364,  34  N.  E.  Rep. 

44  Fed.  Rep.  473.  904. 

77— Hohner  v.   Gratz,     50     Fed.         80— Keller  v.  B.  F.  Goodrich  Co., 

Rep.  369;   City  of  Carlsbad  v.  Kut-  117  Ind.  556;   19  N.  E.  Rep.  196. 
now,  68  Fed.  Rep.  794.  81— General   Electric   Co.   v.  Re- 

78— Avery   v.    Wilson,     20    Fed.  new  Lamp  Co.,  128  Fed.  Rep.  154, 

Rep.  856.  156. 

79 — Saxlehner    v.    Siegel-Cooper         82 — Gray,     J.,     in     Independent 

Co.,    179    U.    S.    42;      Colman     v.  Baking  Powder   Co.   v.   Boorman, 

Crump,  70  N.  Y.  573;  Taendsticks-  130  Fed.  Kep.  726. 


§156] 


THE    ACTION    IN    EQUITY. 


379 


§  156.  The  relief  in  equity.— In  regard  to  making  an 
application  for  a  ijreliminaiy  injunction  in  cases  of  un- 
fair trade  or  trademark  infringement,  it  should  be  re- 
membered that  wherever  there  is  any  doubt  as  to  the 
plaintiff's  right  or  the  defendant's  infringement,  the 
application  pendente  lite  will  be  denied.'^'  Accordingly 
the  courts  have  refused  to  grant  the  preliminaiy  injunc- 
tion where  it  appeared  probable  that  the  plaintiff  had 
never  accjuired  the  exclusive  right  to  use  the  mark,**^ 
but  held  it  ds  a  tenant  in  common  with  another;**'^  where 
there  existed  a  doubt  whether  the  words  claimed  as 
trademarks  by  the  plaintiff  ("Pile  Leclancha"  and  "Bis- 
que," applied  to  electric  batteries)  were  or  were  not 
merely  descriptive  words  ;**^  where  the  facts  indicated 
that  the  complainant  was   possibly  guilty  of  laches  ;^^ 


83 — "An  interlocutory  injunction 
operates  somewhat  in  the  nature  of 
judgment  and  execution  before 
trial.  Without  question  it  is  at 
times  an  appropriate  remedy  in  the 
prevention  of  great  wrong,  but  to 
authorize  its  issuance  there  must 
exist  a  pressing  necessity.  The 
right  to  it  must  be  clear,  and  the 
apprehended  injury  must  be  griev- 
ous, and  generally,  where  the  in- 
jury may  be  measured  in  money, 
the  alleged  wrong-doer  should  be 
shown  to  be  unable  pecuniarily  to 
respond."  Jenkins,  J.,  in  American 
Cereal  Co.  v.  Eli  Pettijohn  Cereal 
Co..  (2),  22  C.  C.  A.  236,  76  Fed. 
Rep.  372-374.  To  the  same  effect, 
see  Smith-Dixon  Co.  v.  Stevens, 
Md.,  59  Atl.  Rep.  401. 

In  refusing  to  grant  a  prelimin- 
ary injunction  Mr.  Justice  Bradley, 
on  circuit,  said:  "My  great  reluc- 
tance to  grant  a  preliminary  in- 
junction for  suppressing  the  use 
of  a  business  name  or  trademark, 
in  any  case  in  which   the  matter 


in  issue  is  a  subject  for  fair  dis- 
cussion, induces  me  to  withhold 
the  order."  Celluloid  Mfg.  Co.  v. 
Cellonite  Mfg.  Co.,  32  Fed.  Rep. 
94-102.  And  to  the  same  effect 
see  Van  Camp  Packing  Co.  v. 
Cruikshanks  Bros.  Co.,  90  Fed. 
Rep.  814;  33  C.  C.  A.  280;  Charles 
E.  Hires  Co.  v.  Consumers'  Co.,  41 
C.  C.  A.  71,  100  Fed.  Rep.  809,  813; 
Goldstein  v.  Whelan,  62  Fed.  Rep. 
124. 

84 — Societe  des  Huiles  D'Olive 
de  Nice  v.  Rorke,  31  N.  Y.  Supp.  51. 

85 — American  Cereal  Co.  v.  Eli 
Pettijohn  Cereal  Co.,  76  Fed.  Rep. 
372.  22  C.  C.  A.  236. 

86 — Laclancha  Battery  Co.  v. 
Western  Electric  Co.,  21  Fed.  Rep. 
538.  Same  of  "air-cell"  and  "fire- 
board'  applied  to  fire-proofing  ma- 
terial. New  York  Asbestos  Mfg. 
Co.  v.  Amber  Asbestos  Air-cell  Cov- 
ering Co.,  99  Fed.  Rep.  85,  afl5rmed, 
43  C.  C.  A.  46,  102  Fed.  Rep.  890. 

87 — Estes  V.  Worthington,  22 
Fed.  Rep.  822. 


380  HOPKINS   ON    TRADEMARKS.  [§  156 

and  where  the  defendant's  affidavits  created  a  doubt  in 
the  mind  of  the  court  as  to  whether  the  plaintiff  had 
been  the  exclusive  user  of  the  symbols  claimed  by  him 
as  his  trademark.^^  A  preliminary  injunction  will  not 
be  awarded  on  ex  parte  affidavits  unless  in  a  clear  case,^^ 
particularly  where  the  defendant  is  financially  able  to  re- 
spond for  damages.^^  A  mandatory  injunction  pending 
the  suit  is  not  granted  except  in  extreme  cases  where 
the  right  thereto  is  clearly  established  and  it  appears 
that  irreparable  injury  will  follow  from  its  refusal.^^ 

So  when  the  court  has  reason  to  doubt  that  the  defend- 
ant has  been  guilty  of  acts  amounting  to  an  invasion 
of  the  plaintiff's  trade  rights,  a  preliminary  injunction 
will  not  be  issued.^^  But  while  refusing  the  interlocu- 
tory injunction,  the  court  may,  in  its  discretion,  require 
the  defendant  to  keep  an  account,  pending  the  suit,  of 
all  his  dealings  in  goods  bearing  the  alleged  infringing 
mark;  as  Judge  Treat  said  in  making  such  an  order: 
*'It  will  not  hurt  him  to  keep  an  account.  "^^ 

It  is  sufficient  to  sustain  the  application  for  the  pre- 
liminary^ injunction  (so  far  as  the  plaintiff's  title  to  the 
mark  is  concerned)  if  he  has  established  his  right  to  the 
trademark  in  a  former  proceeding."^  While  the  decision 
in  such  former  proceeding  is  not  conclusive  and  binding 
upon  the  court  in  the  later  case,  it  is  persuasive  and  of 

88— French  v.  Alter  &  Julian  Co.,  91— Hagen  v.  Beth,  118  Cal.  330. 

74  Fed.  Rep.  788;    Leclancha  Bat-  92 — Goodyear  Rubber  Co.  v.  Day, 

tery  Co.   v.   Western   Electric   Co.,  22  Fed.  Rep.  44;  Whiting  Mfg.  Co. 

21    Fed,    Rep.    538;    Portuondo    v.  v.  Jos.   H.  Bauland   Co.,  56  N.  Y. 

Monne,  28  Fed.  Rep.  16;   Davis  v.  Supp.   114. 

Davis,  27  Fed.  Rep.  490.  93— Goodyear  Rubber  Co.  v.  Day, 

89 — New  York  Asbestos  Mfg.  Co.  22  Fed.  Rep.  44.       For  a  similar 

V.  Amber  Asbestos  Air-cell  Cover-  order,    see    Cantrell    &    Cochrane, 

ing  Co.,  99  Fed.  Rep.  85;    Lare  v.  Ltd.,  v.  Wittemann,  109  Fed.  Rep. 

Harper  &  Bros.,  86  Fed.  Rep.  481;  82. 

30  C.  C.  A.  373.  94— Symonds  v.  Greene,  28  Fed. 

90— H.  Mueller  Mfg.  Co.  v.  A.  Y.  Rep.  834,  835;    Moxie  Nerve  Food 

McDonaly  &  Morrison  Mfg.  Co.,  132  Co.  v.  Beach,  33  Fed.  Rep.  248. 
Fed.  Rep.  585.  58a 


§  156]  THE    ACTION    IN    EQUITY.  381 

great  weight,  and  on  the  motion  for  a  preliminary  in- 
junction, especially  where  it  sustains  the  impression  of 
the  court  upon  the  hearing,  is  decisive.'-'^  Where  a  de- 
murrer is  interposed  to  the  bill,  upon  the  application  for 
preliminary  injunction,  the  allegations  of  fraud  in  the 
bill  are  confessed  thereby;  and  if  the  demurrer  is  over- 
ruled the  complainant  is  entitled  to  the  preliminary  in- 
junction."" 

Upon  granting  a  preliminary  injunction  bond  may  be 
required  of  the  complainant. 

W^iere  such  a  bond  was  given,  conditioned  for  "the 
payment  of  all  damages  and  costs  to  be  awarded  against 
the  complainant  and  in  favor  of  the  defendant  upon  the 
trial  or  final  hearing,"  a  demurrer  was  sustained  to  a 
declaration  setting  forth  the  obligee's  claim  to  damage, 
because  no  damages  were  awarded  on  the  final  hearing.''" 
The  Supreme  Court  has  commended,  as  a  proper  con- 
dition of  such  bonds,  one  which  ran  "to  answer  all  dam- 
ages which  the  defendant  in  that  suit  might  sustain  in 
consequence  of  said  injunction  being  granted,  should  the 
same  be  thereafter  dissolved."*'^ 

It  is  a  general  rule  in  the  law  of  unfair  trade,  as  well 
as  in  patent  law,  that  where  the  infringement  is  ad- 
mitted or  proven  the  plaintiff  is  entitled  to  a  reference 
for  an  accounting  as  a  matter  of  right.^  But  ' '  cases  fre- 
quently arise  where  a  court  of  equity  will  refuse  the 
prayer  of  the  complainant  for  an  account  of  gains  and 
profits,  on  the  ground  of  delay  in  asserting  his  rights, 

95— Price  Baking  Powder  Co.  v.  Bein  v.  Heath,  12  How.  168,  as  con- 

Fyfe,  45  Fed.  Rep.  799.  trolling  his  decision. 

96— Enoch  Morgan's  Sons  Co.  v.  98— Bein  v.   Heath,   12   Howard, 

Hunkele.   16  Off.  Gaz.   1092,  1093.  168-177. 

97— Beakin  v.   Stanton,    3    Fed.  1— Oakes  v.  Tonsmierre,  49  Fed. 

Rep.    435.     In   his   opinion   Judge  Rep.    447-453;    Campbell    Printing 

Blodgett  calls  attention  to  the  wide  Press  Co.  v.  Manhattan  R.  Co.,  49 

conflict   of  authority   in   the   deci-  Fed.  Rep.  930-932;  Fisk  v.  Mahler, 

sions  of  the  courts  of  the  several  54  Fed.  Rep.  528. 
states  upon  this  subject,  and  cites 


382  HOPKINS   ON    TR.VDEMARKS.  [§  156 

even  when  the  facts  proved  render  it  proper  to  grant  an 
injunction  to  prevent  future  infringement,  "^ 

In  case  of  unfair  competition,  though  the  facts  justify 
injunction,  there  can  be  no  money  judgment  for  damages 
unless  the  defendant  has  been  found  guilty  of  fraudu- 
lent intent.^ 

*'In  England  the  rule  is  stringent  in  trademark  cases 
that  lack  of  diligence  in  suing  deprives  the  complainant 
in  equity  of  the  right  either  to  an  injunction  or  an  ac- 
count. Our  courts  are  more  liberal  in  this  respect.  A 
long  lapse  of  time  will  not  deprive  the  owner  of  a  trade- 
mark of  an  injunction  against  an  infringer,  but  a  reason- 
able diligence  is  required  of  a  complainant  in  asserting 
his  rights,  if  he  would  hold  a  wrong-doer  to  an  account 
for  profits  and  damages.  This  rule,  however,  applies 
only  to  those  cases  where  there  has  been  an  acquiescence 
after  a  knowledge  is  brought  home  to  the  complainant.'^* 

It  is  now  the  rule  in  England,  as  we  have  seen  in  our 
discussion  of  the  question  of  damages  at  law,  that  upon 
the  injunction  being  entered  in  the  action  in  equity 
the  complainant  is  compelled  to  elect  between  profits 
and  damages ;  he  cannot  have  both.  If  he  elects  to  take 
his  damages,  the  issue  is  sent  to  the  Queen's  Bench 
division  to  be  tried  by  a  jury.^  In  our  federal  courts, 
however,  there  is  no  provision  for  transferring  the  case 
from  the  equity  side  to  the  law  side  after  the  entry  of 
the  interlocutory  decree,  nor  any  other  provision  for  sub- 
mitting the  issue  of  damages,  in  an  equity  case,  to  a 
juiy.  The  plaintiff  is  not  compelled  to  elect  between 
profits  and  damages,  but  the  reference  is  made  to  the 
master  in  chancery  to  take  an  account  of  the  defendant's 
profits  and  to  make  an  assessment  of  the  damages  sus- 

2— Mr.  Justice  Clifford  in  Mc-  sor,  61  C.  C.  A.  233,  124  Fed.  Rep. 
Lean  v.  Fleming,  96  U.  S.  245-257.     200,  202. 

To  the  same  effect  see  Low  v.  4 — Nixon,  J.,  in  Sawyer  v.  Kel- 
Fels,  35  Fed.  Rep.  361-363.  logg,  9  Fed.  Rep.  601. 

3 — ^N.  K.  Fairbank  Co.  v.  Wind-        5— Fennessy  v.  Rabbits,  56  L.  T. 

138;  Cartmell.  125. 


§  156J  THE    ACTION    IN    EQUITY.  383 

tained  by  the  plaintiff.**  In  assessing  damages  the  mas- 
ter will  consider  the  extent  to  whieli  plaintiff's  sales  have 
fallen  off,  if  the  defendant's  acts  are  the  cause  of  such 
falling  off/ 

It  was  held  in  one  case  that  the  ])rofits  due  to  the  use 
of  the  trademark  only  were  the  subject  of  in(iuiry.^  But 
this  was  clear  error,  and  the  court  laying  down  this  rule 
cited  in  support  of  it  only  one  precedent  and  that  a 
patent  case."  This  question  was  considered  very  care- 
fully by  the  supreme  court  of  California,  and  its  conclu- 
sion is  as  follows:  "Every  consideration  of  reason,  jus- 
tice and  sound  policy  demands  that  one  who  fraudulently 
uses  tlie  trademark  of  another  should  not  be  allowed  to 
shield  himself  from  liability  for  the  profit  he  has  made 
by  the  use  of  the  trademark,  on  tlie  plea  that  it  is  im- 
possible to  determine  how  much  of  the  profit  is  due  to 
the  trademark,  and  how  much  to  the  intrinsic  value  of 
the  commodity. ' '  The  supreme  court  held,  therefore,  that 
the  trial  court  had  not  erred  in  awarding  the  plaintiff 
the  whole  profit  made  by  the  defendant.^®  In  treating 
the  same  subject.  Judge  Sawj^er  said:  *'To  adopt  as  the 
measure  of  compensation  for  such  injuries  the  difference 
between  the  price  for  which  the  spurious  goods  would 
sell  without  the  trademark  and  for  which  they  would 
sell  with  it  imprinted  thereon,  would  be  a  mockerj^  of 
justice.  In  my  judgment  the  infringer  should  at  least 
account  for  the  entire  profits  made  upon  the  goods  wrong- 
fully sold  with  the  trademark  impressed  upon  them."" 
This  now  appears  to  be  the  accepted  rule.^- 

6— The     Collins    Co.    v.     Oliver  Case  No.   6714;    1   Dill.   329;    Cox, 
Ames  &  Sons  Corporation,  18  Fed.  Manual,  No.  207. 
Rep.  561-571 ;  Benkert  v.  Feder,  34  8— Atlantic  Milling  Co.  v.  Row- 
Fed.  Rep.  534,  535;  Sawyer  v.  Kel-  land,  27  Fed.  Rep.  24. 
logg,  9  Fed.   Rep.    601,    602;    Saw-  9— Garretson  v.  Clark,  111  U.  S. 
yer  v.  Horn,  1  Fed.  Rep.  24-39.    To  120. 

the  same  effect  see  Clark  Thread  10— Graham  v.  Plate,  40  Cal.  593- 

Co.  V.  William   Clark   Co.,    (2)    56  599. 

N.  J.  Eq.  739,  40  Atl.  Rep.  686.  11— Benkert    v.    Feder,    34    Fed. 

7 — Hostetter    v.    Vowinkle,  Fed.  Rep.  534. 


384  HOPKINS   ON    TR.VDEMARKS.  [§  157 

Counsel  fees  expended  by  plaintiff  in  the  cause  are 
not  an  element  of  damage,  and  cannot  be  considered  in 
assessing  damages  in  equity.^^ 

The  court  will  refuse  to  decree  an  accounting  where  it 
is  manifestly  impossible  to  segregate  the  profits  arising 
from  the  infringement.^^ 

In  jurisdictions  where  the  master  is  permitted  to  as- 
sess damages,  he  may  do  so  even  in  the  absence  of  any 
direct  proof  of  loss  of  profit.^ ^  As  all  participants  in 
torts  are  principals,  one  who  participates  in  unfair  trade 
by  furnishing  fraudulent  labels  is  liable  in  equity  to  the 
party  injured  for  the  whole  damage  resulting  from  the 
unfair  competition.^ '^ 

§  157.  Punitive  damages  in  equity.— "The  question  of 
the  true  measure  of  damages  in  cases  of  this  sort  is  an 
interesting  one.  The  injured  party  is  entitled  to  full 
compensation  for  the  injury,  but  how  shall  that  be  meas- 
ured? Manifestly,  the  profits  which  the  infringer  has 
made  would  not  in  all  cases  be  compensation  to  the  in- 
jured. The  latter 's  loss  in  part  inheres  in  the  failure  to 
acquire  a  just  and  deserved  gain;  also  in  the  injury  to 
the  reputation  of  his  product  by  reason  of  the  substitu- 

12 — Saxlehner  v.  Eisner  &  Men-  gument,   it   appears   to    me    that, 

delson  Co.,  138  Fed.  Rep.  22.  apart    from    any    direct    proof    of 

13 — Burnett   v.   Phalon    (1),    21  loss  of  profit,  there  arises  in  cases 

How.     Pr.     100;     Cox'     American  of  this  class  an  inference  of  pos- 

Trademark  Cases  292.  sible  damage  to  the  manufacturer 

14 — Ludington    Novelty    Co.    v.  whose  name  is  improperly  used — 

Leonard,  62  C.  C.  A.  269,  127  Fed.  damage    to    his    well     established 

Rep.  155.  reputation.     It  is  impossible  that 

15 — Thus  in  a  chancery  case  in  the  quantum  of  damage   in  cases 

New  Zealand  the  court  said:  "First  of  this  class  can  be  mathematically 

as   to    damages,   I   am   of   opinion  ascertained;    no   account   can   pos- 

that  there  has  been  no  direct  proof  sibly  reach  such  a  matter.    It  must 

of  loss  of  profit  by  Messrs.  Little-  always  be  a  matter  of  discretion 

John  &  Son,   consequent  upon  the  for  the  court  and  jury."    Littlejohn 

sale  of  the  watches  which  improp-  v.   Mulligan,  3  New  Zealand  Rep. 

erly    have    their    name     inscribed  446. 

upon   them,    but,   as   I    have   inti-        16 — Hildreth  v.  Sparks  Mfg.  Co., 

mated  during  the  course  of  the  ar-  99  Fed.  Rep.  484. 


§  158  J  THE    ACTION    IN    EQUITY,  385 

tion  of  the  spurious  article.  The  latter  element  is  diflfi- 
cult,  if  not  impossible  of  accurate  admeasurement.  It 
can  only  be  approximately  compensated  by  an  allowance 
in  the  nature  of  punitory  damages,  resting  largely  in 
discretion."*'^  This  hapi)ens  to  be  merely  a  dictum,  as 
the  issue  was  not  before  the  court.  But  it  is  the  state- 
ment of  a  sound  principle,  though  one  difficult  of  prac- 
tical application,  and  is  flatly  opposed  to  Ilcmiessy  v. 
Wilmerding-Loeue  Co.,^^  which  denies  the  right  to  re- 
cover punitive  damages  in  equity  in  this  class  of  cases. 

§  158.  Increase  of  damages  in  equity.— Section  19  of 
the  Act  of  1905  provides  that:  "Upon  a  decree  being 
rendered  in  any  such  case  for  wrongful  use  of  a  trade- 
mark the  complainant  shall  be  entitled  to  recover,  in  ad- 
dition to  the  profits  to  be  accounted  for  by  the  defendant, 
the  damages  the  complainant  has  sustained  tliereby. 
.  .  .  The  court  shall  have  the  same  power  to  in- 
crease such  damages,  in  its  discretion,  as  is  given  by 
section  sixteen  of  this  Act  for  increasing  damages  found 
by  verdict  in  actions  of  law." 

This  provision  was  doubtless  intended  to  enable  the 
trial  court,  having  regard  to  the  questions  of  fraudulent 
intent  and  guilty  knowledge  of  the  defendant,  to  assess 
damages  by  way  of  punishment,  in  addition  to  those 
damages  found  by  the  Master  to  have  been  actually  sus- 
tained by  the  complainant. 

§  159.  The  defendant's  credits  upon  accounting.— Sec- 
tion 19  of  the  Act  of  1905  provides  that  "In  assessing 
profits  the  plaintiff  shall  be  required  tp  prove  defend- 
ant's sales  only;  defendant  must  prove  all  elements  of 
cost  which  are  claimed." 

These  jjrovisions  are  evidentiary^,  shifting  the  burden 
of  proof  upon  the  defendant,  after  the  complainant  has 

17— Jenkins,  J.,  in  Walter  Baker        18—103  Fed.  Rep.  90. 
&  Co.  V.  Slack,  130  Fed.  Rep.  514, 
519,  65  C.  C.  A.  138. 


386  HOPKINS   ON   TRADEMARKS.  [§  160 

proven  the  extent  of  sales,  to  establish  such  credits  or 
off-sets  as  he  may  be  entitled  to. 

Where  the  defendant  carried  on  the  infringing  traffic 
in  connection  with  his  regular  business,  it  has  been  held, 
the  master  in  chancery  will  not  make  any  deduction  for 
expenses  in  taking  the  account  of  profits;^"  but  two  later 
cases  hold  directly  to  the  contrary.-*^ 

§  160.     Label  designing  as  a  judicial  function.— The 

willingness  of  courts  of  equity  to  aid  in  maintaining  fair- 
ness in  competition  has  been  evidenced  by  a  label  de- 
signed by  Judge  Coxe  and  exhibited  with  his  opinion 
in  a  case  involving  the  word  "Carlsbad"  as  applied  to 
mineral  water,  with  the  statement  that  "in  order  that 
there  may  be  no  misunderstanding  upon  the  settlement 
of  the  decree,  the  court  has  applied  a  copy  of  a  label 
which,  it  is  thought,  the  defendant  may  use  with  im- 
punity as  truthfully  representing  the  water  sold  by 
him.  "21 

In  another  case,  .Judge  Lacombe,  in  offering  alterna- 
tive forms  of  decree  for  the  choice  of  a  defendant,  said 
"the  mandate  will,  if  defendant  prefers,  direct  a  modifi- 
cation of  the  interlocutory  decree  solely  by  requiring  the 
affixing  upon  every  package  sold,  in  type  as  prominent 
as  the  title,  of  the  statement  that  "W.  H.  Baker  is  dis- 
tinct from  and  has  no  connection  with  the  old  chocolate 
manufactory  of  Walter  Baker  &  Co.'  ""-  The  Court  of 
Appeals  of  the  Scvonth  Circuit  has  criticised  this  prac- 
tise, Judge  Jenkins  observing  that  "The  court  below, 
upon  holding  that  the  changed  label  of  the  defendant  in- 
fringed the  complainant's  right,  caused  to  be  submitted 
for  its  approval  another  form  of  label,  which  it  approved, 

19— Societe  Anonyme  v.  Western  21 — City  of  Carlsbad  v.  Schultz, 

Distilling  Co.  46  Fed.  Rep.  921.  78  Fed.  Rep.  469,  472. 

20— Walter  Baker  &  Co.  v.  Slack,  22— Walter  Baker  &  Co.  v.  San- 

65    C.    C.    A.,    138,    130    Fed.    Rep.  ders.  80  Fed.  Rep.  889,  895,  26  C. 

514,  520;    Saxlehner    v.    Eisner  &  C.  A.  220. 
Mendelson  Co.,  138  Fed.  Rep.  22. 


§  160]  THE   ACTION    IN    EQUITY.  387 

and  authorized  the  defendant  to  use  upon  bottles  of  the 
same  form  as  those  used  by  the  complainant.  We  greatly 
doubt  the  propriety  of  such  action.  When  an  infringe- 
ment has  been  found,  it  should  be  restrained.  A  court 
of  equity  does  not  sit  as  an  arbiter  to  determine  in  ad- 
vance upon  other  and  changed  labels  which  the  infringer 
may  adopt  to  avoid  the  condemnation  of  the  court. 
Wliether  such  changed  forms  do  in  fact  infringe  is  mat^. 
ter  of  fact  to  be  detennined  by  the  court  in  its  usual 
course  of  procedure  upon  complaint  lodged  by  the  party 
damnified.  The  duty  of  the  court  below  was  to  deter- 
mine whether  the  labels  complained  of  in  the  bill  in- 
fringed the  com])lainant's  right.  That  duty  was  fully 
pcrfonned  when  the  court  had  so  determined.  It  is  not 
called  upon  to  decide  whether  a  new  label  proposed  for 
adoption  would  infringe.  This  is  especially  so  here, 
where  the  infiingement  was  deliberate  and  designed.  In 
such  case  the  court  ought  not  to  say  how  near  the  in- 
fringer may  lawfully  approximate  the  label  of  the  com- 
plainant, but  should  cast  the  burden  upon  the  guilty 
party  of  deciding  for  himself  how  near  he  may  with 
safety  drive  to  the  edge  of  the  precipice,  and  whether  it 
be  not  better  for  him  to  keep  as  far  from  it  as  pos- 
sible";-^ and  in  a  later  ease,  quoting  from  the  foregoing 
opinion,  the  same  court,  per  curiam  remarks  "it  will  be 
time  enough  for  the  court  to  detennine  the  question  upon 
issues  properly  framed  and  the  evidence  taken  there- 
under. '  '"■* 

AVhere  the  complainant's  counsel  has  stated  that  he 
saw  no  objection  to  a  proposed  new  label  submitted  to 
him  by  defendant,  the  fact  was  held  conclusive  against 

23— Charles  E,  Hires  Co.  v.  Con-  to    the   same   effect    see    Sterling 

sumers'    Co.,    100    Fed.    Rep.,    809,  Remedy  Co.  v.   Spermine  Medical 

813,   41   C.   C.  A.   71.  Co.,  50  C.  C.  A.  657,  112  Fed.  Rep. 

24— Williams  v.  Mitchell,  45   C.  1000. 
C.  A..  265,  106  Fed.  Rep.  168,  172: 


388  HOPKINS   ON   TRADEMARKS.  [§  161 

an  application  for  a  preliminary  injunction  to  restrain 
its  use.-^ 

§  161.  Appeals.— Section  17  of  the  Act  of  1905  pro- 
vides that  "The  circuit  courts  of  Appeal  of  the  United 
States  and  the  Court  of  Appeals  of  the  District  of  Co- 
lumbia shall  have  appellate  jurisdiction  of  all  suits  at 
law  or  in  equity  respecting  trademarks  registered  in  ac- 
cordance with  the  provisions  of  this  Act,  arising  under 
the  present  Act,  without  regard  to  the  amount  in  contro- 
versy. ' ' 

Section  7  of  the  act  of  March  3,  1891  (26  Stat.  826, 
c.  517)  establishing  the  Circuit  Court  of  Appeals  as 
amended  by  the  act  of  February  18,  1895  (28  Stat.  666, 
c.  96),  provides: 

"That  where  upon  a  hearing  in  equity  in  a  district 
court  or  a  circuit  court  an  injunction  shall  be  granted, 
continued,  refused  or  dissolved  by  an  interlocutory  order 
or  decree,  or  an  application  to  dissolve  an  injunction 
shall  be  refused  in  a  cause  in  wliich  an  appeal  from  a 
final  decree  may  be  taken  under  the  provisions  of  this 
act  to  the  circuit  court  of  appeals,  an  appeal  may  be 
taken  from  such  interlocutory  order  or  decree  granting, 
continuing,  refusing,  dissolving,  or  refusing  to  dissolve 
an  injunction  to  the  circuit  court  of  appeals,  provided 
that  the  appeal  must  be  taken  within  thirty  days  from 
the  date  of  entry  of  such  order  or  decree  and  it  shall 
take  precedence  in  the  appellate  court ;  and  the  proceed- 
ings in  other  respects  in  the  court  below  shall  not  be 
stayed,  unless  othei^wise  ordered  by  that  court,  during 
the  pendency  of  such  appeal:  and  provided  further  that 
the  court  below  may,  in  its  discretion,  require  as  a  con- 
dition of  the  api)eal,  an  additional  injunction  bond." 
Under  this  section,  an  appeal  from  a  decree  made  after 
final  hearing  on  the  merits,  declaring  infringement  of  a 
trademark,  awarding  a  perpetual  injunction  and  refer- 

25— Weber   Medical   Tea    Co.   v,  Weber,  102  Fed.  Rep.  156. 


§  162]  THE    ACTION    IN    EQUITY.  389 

ring  the  cause  to  a  master  for  an  accounting,  is  not  an 
api^ealable  final  decree  but  is  interlocutory,  and  such  an 
appeal,  to  be  effectual  must  be  taken  within  30  days  from 
entr^'  of  the  interlocutory  decree.-*^ 

The  United  States  circuit  courts  of  appeals  will  review 
the  action  of  the  circuit  courts  in  granting  or  refusing 
preliminary  injunctions,  for  the  purpose  of  reviewing  the 
discretion  of  the  court  below  and  correcting  error  in  its 
exercise.  In  a  proper  case  it  will  enlarge  the  scope  of  a 
preliminary  injunction  which  falls  short  of  protecting 
the  complainant's  rights.-^ 

Where  such  a  preliminary  injunctive  order  is  ap- 
pealed from,  however,  "the  question  for  consideration 
is  whether  the  court  below  improperly  exercised  its  dis- 
cretionary power  in  respect  of  issuing  an  injunction 
pendente  lite.  Unless  it  clearly  appears  that  it  has  so 
done,  the  order  should  be  affirmed.  "^^ 

§  162.  Certiorari.— Section  18  of  the  Act  of  1905  pro- 
vides as  follows: 

''That  writs  of  certiorari  may  be  granted  by  the  Su- 
preme Court  of  the  United  States  for  the  review  of  cases 
arising  under  this  Act  in  the  same  manner  as  provided 
for  patent  cases  by  the  Act  creating  the  circuit  court  of 
appeals." 

The  Act  referred  to  is  known  as  the  Judiciary  Act  of 
1891,  Section  6  of  which  Act  provides  "That  in  any 
such  case  as  is  hereinbefore  made  final  in  the  Circuit 
Court  of  Appeals,  it  shall  be  competent  for  the  Supreme 
Court  to  require  by  certiorari  or  otherwise,  any  such 
case  to  be  certified  to  the  Supreme  Court  for  its  review 
and  determination  with  the  same  power  and  authority  in 

26 — Raymond    v.    Royal  Baking         28 — Chickering  v.  Chickering  & 

Powder  Co..  76   Fed.  Rep.  465,  22  Sons,   120  Fed.  Rep.  69,  73.  56  C. 

C.  C.  A.   278.  C.  A.  475;   Pfeiffer  v.  Wilde,  46  C5, 

27— Charles  E.  Hires  Co.  v.  Con-  C.  A.  415,  107  Fed.  Rep.  456. 
sumers'  Co.,  100  Fed.  Rep.  809-813, 
41  C.  C.  A.  71. 


390  HOPKINS   ON    TRADEMARKS.  [§162 

the  case  as  if  it  bad  been  carried  by  appeal  or  writ 
of  error  to  the  Supreme  Court."  Section  716  of  the 
United  States  Revised  Statutes  has  been  held  to  author- 
ize the  use  of  writs  of  certiorari  by  the  Supreme  Court 
in  all  proper  cases.^'' 

The  general  rule  concerning  the  issuance  of  a  writ  of 
certiorari  by  the  Supreme  Court  is  that  it  rests  within 
the  discretion  of  the  court.  Mr.  Chief  Justice  Fuller 
has  said  that  "When  sought  as  between  private  persons, 
the  general  rule  is  that  the  writ  of  certiorari  will  be 
granted  or  denied,  in  the  sound  discretion  of  the  court, 
on  special  cause  or  ground  shown;  and  will  be  refused 
where  there  is  a  plain  and  equally  adequate  remedy  by 
appeal  or  otlierwise.  "^^ 

29— Re  Tampa  Suburban  R.  Co.,        30— Re  Tampa  Suburban  R.  Co., 
168  U.  S.  583,  42  L.  Ed.  589.  168  U.  S.  583,  42  L.  Ed.  589. 


CHAPTEil  XIV. 

MATTERS  OF  PRACTICE  AND  EVIDENCE. 

§  163.  Matters  of  which  courts  will  take  judicial 
notice. — This  subject  is  of  practical  importance  in  the 
trial  of  trademark  causes.  The  courts  of  the  United 
States  will  take  judicial  notice  of  the  statutes  of  the 
several  states,^  and  of  the  decisions  of  the  state  courts 
upon  the  constitutionality  of  such  statutes.-  All  courts 
will  take  judicial  notice  of  the  treaties  or  conventions 
with  a  foreign  government  or  power."*  It  has  been  ex- 
pressly held  that  judicial  notice  will  be  taken  of  the 
convention  concerning  trademarks,  of  April  16, 1869,  be- 
tween the  United  States  and  France.^  As  in  other  classes 
of  cases,  the  courts  take  judicial  notice  of  political  facts, 
legal  facts,  official  facts,  public  histoiy,  natural  history 
and  the  vernacular  language,  and  all  matters  of  common 
and  ordinary  knowledge,  including  matters  of  science. 

§  164.  Expert  and  other  evidence  on  the  question  of 
infringement.— Inspection  by  the  court  is  the  main,  and 
indeed  the  final  test  of  the  alleged  resemblance  in  trade- 
mark cases.'^  The  courts,  as  a  rule,  give  little  weight  to 
expert  testimony  on  questions  of  similitude.'' 

1— Re  Jordan,  49  Fed.  Rep.  238;  dison-Tinsley     Tob.     Co.,     52     Mo. 

Gormley  v.  Bunyan,  138  U.  S.  623.  App.   10;    Collins   Chemical   Co.  v. 

2— Knox    V.     Columbia    Liberty  Capitol  City  Mfg.  Co.,  42  Fed.  Rep. 

Iron  Co.,  42  Fed.  Rep.  378.  64;    Liggett    &   Myer    Tob.    Co.    v. 

3— Ex    parte    McCabe,    46    Fed.  Hynes.   20   Fed.   Rep.   883;    Joseph 

Rep.  363.  Dixon  Crucible  Co.  v.  Benham,  4 

4 — La  Croix  v.  Sarrazzin,  15  Fed.  Fed.  Rep.  527. 
Rep.  489.  6 — Cook  v.  Starkweather,  13  Abb. 

5— Von  Mumm  v.  Frash,  56  Fed.  Pr.  N.  S.  392;  Popham  v.  Wilcox, 
Rep.  830-838;  Filley  v.  Fassett,  44  66  N.  Y.  69;  Re  Jelley,  Son  &  Jones, 
Mo.  173;  Gail  v.  Wackerbarth.  28  51  L.  J.  Ch.  639;  Radam  v.  De- 
Fed.  Rep.   286;   Drummond  v.  Ad-  stroyer  Co.,  81  Texas,  122;    16  S. 

391 


392  HOPKINS   ON   TRADEMARKS.  [§  164 

Testimony  of  skilled  witnesses  to  the  effect  that  in 
their  opinion  the  public  is  likely  to  be  deceived  by  the 
similarity  of  two  trademarks,  although  valuable  in  a 
doubtful  case,"  is  not  of  itself  sufficient  evidence  of  in- 
fringement.^ When  technical  trade  or  scientific  ques- 
tions are  involved,  however,  expert  evidence  is  highly 
desirable,'^  and  especially  when  the  probability  of  the 
ultimate  consumer  being  deceived  by  tlie  defendant's 
goods  rests  on  the  character  and  habits  of  the  people 
who  use  the  jDroduct,^''  or  the  manner  in  which  the  goods 
are  usually  sold  or  exhibited  by  the  retailer.^  ^ 

Where  the  defendant  was  charged  with  re-filling  *'A. 
V.  H."  gin  bottles,  evidence  of  an  expert  ganger  show- 
ing a  variance  in  alcoholic  proof  between  the  genuine  gin 
and  that  sold  by  defendant  in  the  trademarked  packages, 
was  admitted.^- 

AVhere  the  complainant's  case  rested  on  the  testimony 
of  hired  witnesses  that  they  had  drunk  bitters  sold  them 
by  the  defendant  in  his  saloon  as  being  complainant's 


W.   Rep.   990;    P.   Lorillard  Co.  v.  questioned   (Radam  v.  Capital  Mi- 

Peper,  86  Fed.  Rep.  956;   Monopol  crobe  Destroyer  Co.,  81  Texas,  122; 

Tobacco  Works  v.   Gensior,  66  N.  26  Am.  St.  Rep.  783). 

Y.  Supp.  155.    Lord  Esher,  Master  9 — Mitchell   v.   Henry,   L.   R.   15 

of  the  Rolls,  has  terseley  said:  "If  Ch.  D.  181;  43  L.  T.  186;  Cartmell, 

a  naan  was  to  come  and  tell  me  227;  Re  Worthington,  14  Ch.  D.  8; 

that   a   horse   was   like   a  cat,  he  49   L.   J.   Ch.   646;    Cartmell,   351; 

might  swear  it,  and  you  might  get  Re  Christiansen,  3  R.  P.    C.    54; 

fifty  persons  to  swear    it,    but    I  Cartmell,  95;  Gorham  Co.  v.  White, 

should   not  act  on  such   evidence,  14  Wall.  511;   Williams  v.  Brooks, 

because   it  is   pure   nonsense."  Re  50  Conn.  278;  Price  &  Steuart,  654; 

Christiansen,  3  R.  P.  C.  54-61.  Celluloid  Mfg.  Co.  v.  Read,  47  Fed. 

7— Celluloid    Mfg.    Co.    v.    Read,  Rep.  712-716. 

47  Fed.  Rep.  712-716.  10— Drummond  v.  Addison-Tins- 

8— Columbia  Mill  Co.  v.  Alcorn,  ley  Tob.  Co.,  52  Mo.  App.  10;  Sper- 

40  Fed.  Rep.  676;   Cope  v.  Evans,  ry  v.  Percival  Milling  Co.,  81  Cal. 

L.  R.  18  Eq.  138.     But  in  one  case  252-260. 

such   evidence   was   admitted    and  11 — Re  Worthington,  L.  R.  14  Ch. 

approved   (Williams  v.  Brooks,  50  D.  8. 

Conn.     278;     47    Am.    Rep.    642),  12— Van   Hoboken    v.   Mohns    & 

while  in  another  its  propriety  was  Kaltenbach,  112  Fed.  Rep.  528. 


§  164]  MATTERS  OF  PRACTICE  .VND  EVIDENCE.  393 

bitters  and  that  said  bitters  were  imitation,  the  bill  was 
dismissed  on  the  conflicting  testimony  offered  in  defense, 
the  court  remarking  that  hired  witnesses  are  not  dis- 
interested and  their  testimony  for  that  reason  should  be 
scrutinized  with  unusual  caution.^^  In  dismissing  a  bill 
in  which  a  defendant  was  charged  with  refilling  genuine 
packages,  where  the  evidence  was  conflicting,  Judge 
Coxe  remarked  that  "the  burden  is  strongly  upon  the 
complainant  to  prove  fraud  by  a  fair  preponderance  of 
evidence.  "^^ 

Where  proof  is  offered  to  show  that  the  comi)lainant's 
business  has  increased  steadily  during  the  period  of  the 
alleged  unfair  competition,  and  there  is  no  evidence  of 
injury,  such  facts  will  be  considered  in  determining  the 
complainant's  right  to  relief.^ '^  AVhere  the  only  evidence 
of  deception  came  from  purchasers  who  were  not  misled, 
it  was  held  that  the  facts  constituted  a  case  of  substitu- 
tion on  the  part  of  the  retailer,  and  not  unfair  competi- 
tion.^^ 

Expert  testimony  on  other  issues.— A  witness  familiar 
with  the  trade  may  testify  to  the  catch-word  or  other 
peculiar  designation  by  which  an  article  is  known  to  the 

13 — Hostetter  Co.  v.   Bower,   74  proof,  be  persuasive    evidence    of 

Fed.    Rep.    235.     The   quantity   of  other  sales,  and  convincing  proof 

proof  adduced,  and  its  weight,  nee-  of  an  intention  to  sell  whenever  the 

essarily  must  be  fixed  by  the  at-  opportunity   of    doing   so    without 

tendant     circumstances     of     each  detection  is  presented."     Lacombe, 

case.    Thus,  in  one  case  it  was  held  J.,  in  Lever  Bros.    (Ltd.)    v.  Pas- 

that  a  single  sale  of  the  infringing  field,  88  Fed.  Rep.  484.     Citing  De 

article   by   the    defendant's    clerk  Florez    v.    Raynolds,    14    Blatchf. 

was  insuflScient  to  warrant  injunc-  505. 

tion.     Leahy  v.  Glover,  10  R.  P.  C.  14— Hostetter  Co.  v.   Comerford, 

141.     And  in  a  patent  case  it  was  97  Fed.  Rep.  585. 

held   that   a   single   sale   was   not  15 — Stevens     Linen     Works     v. 

per  se  an  infringement.     Byam  v.  William   &   John    Don   &    Co.,    121 

Bullard.  1  Curt.  100;  Fed.  Case  No.  Fed.  Rep.  171. 

2262.    But  evidence  of  a  single  sale  16— Bickmore   Gall   Cure   Co.   v. 

"may,   in    connection    with    other  Karns  Mfg.  Co.,  126  Fed.  Rep.  573. 


394  HOPKINS   ON   TRADEMARKS.  [§  165 

trade/"  or  to  consumers  ;^^  and  of  course  other  witnesses 
similarly  qualified  may  testify  to  the  contrary.^ ^ 

Testimony  of  witnesses  properly  qualified  is  admissi- 
ble to  show  that  owing  to  the  defendant's  infringement, 
plaintiff's  sales  have  fallen  off;  this  is  true  both  at  law-*^ 
and  in  equity.-^  In  the  action  at  law  it  is  competent  for 
the  plaintiff's  proof  to  show  that  his  sales  fell  off  con- 
currently with  the  defendant's  infringement,  from  which 
the  jury  may  infer  that  the  falling  oft'  was  the  result  of 
the  defendant's  acts.^- 

Evidence  of  Defendant's  Good  Faith.— The  relief  rest- 
ing upon  the  charge  of  fraud,  the  fact  that  a  defendant 
has  transacted  his  alleged  infringement  openly,  by  ex- 
tensive advertising  of  his  package  will  be  considered  as 
bearing  on  the  question  of  intent,  where  a  technical 
trademark  is  not  involved."^ 

§  165.  Exhibits.— It  is  particularly  desirable  that  the 
conflicting  marks  be  at  all  times  easily  accessible  to  the 
court,  and  that  they  be  filed  as  exhibits  whenever  pos- 
sible. The  practice  of  the  courts  of  several  states  does 
not  permit  exhibits,  other  than  documentary,  to  be  filed, 
as  no  provision  has  been  made  for  tlieir  accommodation 
and  safe-keeping.  In  Missouri,  where  this  condition 
prevails,  the  St.  Louis  court  of  appeals  has  recommend- 
ed the  preservation  of  the  brands  or  labels  as  a  part  of 
the  record  on  appeal.^^ 

The  federal  courts,  however,  afford  every  facility  re- 
quired for  the  care  of  exhibits  and  the  following  rule  is 
in  effect  in  all  the  federal  circuit  courts  of  appeals: 

**1.  Models,  diagrams  and  exhibits  of  material  form- 

17— Pollen   V.   LeRoy,   30   N.  Y.  78-84;  34  Atl.  Rep.  446. 

549-561.  21— Hostetter  v.  Vowinkle,  Fed. 

18 — Johnson  &  Johnson  v.  Bauer  Case  No.   6714;    1   Dill.   329;    Cox, 

&  Black,  27  C.  C.  A.  374,  82  Fed.  Manual,  No.   207. 

Rep.  662;   Read  v.  Richardson,  45  22 — Shaw  v.  Pilling,  supra. 

L.T.N.S.  54;  Cox,  Manual,  No.  698.  23— T.  B.  Dunn  Co.  v.  Trix  Mfg. 

19— Wilkinson    v.    Greely,    Fed.  Co.,  63  N.  Y.  Supp.  333. 

Case  No.  17671;  1  Curt.  63.  24— Alden  v.  Gross,  25  Mo.  App. 

20— Shaw  V.  Pilling,  175  Pa.  St.  123. 


§  166]  MATTERS  OF  PRACTICE   AND  EVIDENCE.  395 

ing  part  of  the  evidence  taken  in  the  court  below,  in  any 
case  pending  in  this  court  on  writ  of  error  or  appeal, 
shall  be  placed  in  the  custody  of  the  marshal  of  this 
court  at  least  ten  days  before  the  case  is  heard  or  sub- 
mitted. 

"2.  All  models,  diagrams  and  exhibits  of  material 
placed  in  the  custody  of  the  marshal  for  the  inspection 
of  the  court  on  the  hearing  of  a  case  must  be  taken  away 
by  the  parties  within  one  month  after  the  case  is  decided. 
AAHien  this  is  not  done,  it  shall  be  the  duty  of  the  marshal 
to  notify  the  counsel  in  the  case,  by  mail  or  otherwise, 
of  the  requirements  of  this  rule,  and,  if  the  articles  are 
not  removed  within  a  reasonable  time  after  notice  is 
given,  he  shall  destroy  them  or  make  such  other  dis- 
position of  them  as  to  him  may  seem  best."-'' 

It  is  frequently  expedient  to  annex  to  the  order  of  in- 
junction specimens  of  the  marks  used  by  the  defendant.^*' 

§  166.  Discovery. — The  resistance  of  discovery  is 
usually  met  with  by  complainants  in  trademark  causes. 

Lord  Romilly  compelled  a  defendant  to  make  a  full 
discovery  of  all  his  sales,  the  prices,  profits  realized  and 
the  names  of  the  purchasers,  notwithstanding  the  objec- 
tion of  the  defendant  that  he  would  thereby  disclose  his 
business  secrets  f^  and  full  discoveiy  has  been  compelled 
in  other  cases.-^  The  power  to  compel  discovery  is  in- 
herent in  equity,  but  is  not  vested  in  courts  of  law  in 
the  absence  of  statutory  enactment.-'^ 

''Equitable  jurisdiction  will  not  attach  for  discovery 
simply,  except  in  aid  of  a  suit  at  law."^^ 

25— The  above  rule  is  numbered  feld  (2),  1  H.  &  M.  295;   Seb.  224; 

rule  34   in  each  court  of  appeals  Orr  v.  Diaper,  L.  R,  4  Ch.  D.  92; 

but  that  of  the    seventh    circuit,  46  L.  J.  Ch.  41;   Seb.  519. 

where  it  is  numbered  rule  32.  29 — Colgate  v.  Compagnie  Fran- 

26 — Hansen  v.  Siegel-Cooper  Co.  caise,  23  Fed.  Rep.  82-85. 

(1),  106  Fed.  Rep.  690,  691.  30— Colt,   J.,   in    Lord   v.    White- 

27 — Howe  V.  McKernan,  30  Beav.  head  &  Atherton  Machine  Co.,  24 

547.  Fed.  Rep.  801. 

28— Leather  Cloth  Co.  v.  Hirsch- 


396  HOPKINS   ON   TR^VDEM^SJIKS.  [§  167 

In  actions  at  law  production  of  books  and  papers  is 
fully  provided  for,  in  federal  practice,  by  section  724  of 
tlie  Kevised  Statutes.  It  has  been  held  that  inspection 
of  books  or  writings  may  be  ordered  to  be  made  before 
the  trial.^^  Its  provisions,  when  atfording  an  adequate 
remedy,  preclude  resorting  to  equity  to  compel  discov- 
eiy,^-  and  render  the  issuance  of  subpoena  duces  tecum 
unnecessaiy.^^ 

In  equitable  proceedings  discovery  will  not  be  enforced 
when  it  may  tend  to  incriminate  the  person  against  whom 
discoveiy  is  sought,^*  or  to  disclose  trade  secrets,^^  and 
the  same  rule  applies  to  the  enforced  production  of 
books  and  papers  by  such  persons.^^ 

Subject  to  these  restrictions,  discovery  of  material 
facts  will  be  compelled.^^ 

When  a  defendant  professes  to  answer,  he  must  an- 
swer fully.  If  he  desires  protection  against  discovery, 
he  must  seek  such  protection  by  plea.^^ 

§  167.  Evidence  of  recognition  by  others  of  plaintiif 's 
right  to  the  mark.— The  rule  is  well  settled  that  a  former 
adjudication  establishing  a  trademark,  where  there  has 
been  an  adjudication  after  a  bona  fide  contest  on  the 
merits,  and  the  same  issues  were  presented  as  in  the 
later  suit,  is  of  persuasive  if  not  binding  force  in  a  later 
case.^^     But  a  mere  showing  that  the  claimant  of  the 

31 — Lucker     v.     Phoenix    Assur-  35 — See  ante,  Chapter  VII.  and 

ance    Co.,    67    Fed.    Rep.    18;    Ex-  Dobson  v.  Graham,  49  Fed.  Rep.  17. 

change  Bank  v.  Wichita  Cattle  Co.,  36 — Ibid.     See  also  Union  Paper 

61    Fed.    Rep.    190;    United    States  Collar  Co.   v.   Metropolitan   Collar 

V.  National  Lead  Co.,  75  Fed.  Rep.  Co.   (Ltd.),  3  Daly,  171. 

94.  37— Benbow  v.  Low,  L.  R.  16  Ch. 

32— Washburn  &  Moen  Mfg.  Co.  D.  93;  Byass  v.  Sullivan,  21  How. 

V.  Freeman  Wire  Co.,  41  Fed.  Rep.  Pr.  50;   Cox,  278. 

410;  Paton  v.  Majors,  46  Fed.  Rep.  38 — Howe      v.      McKernan,      30 

210.    But  see  Colgate  V.  Compagnie  Beav.   547;    Slater  v.   Banwell,   50 

Francaise,  23  Fed.  Rep.  82.  Fed.  Rep.  150. 

33 — Kirkpatrick    v.    Pope     Mfg.  39 — Moxie    Nerve    Food    Co.   v, 

Co.,  61  Fed.  Rep.  46.  Beach,  33  Fed.  Rep.  248;  Symonds 

34— Byass  v.   Sullivan,   21  How.  v.  Greene,   28   Fed.   Rep.   834;    La 

Pr.  50;   Cox,  278.  Republique  Francaise  v.  Saratoga 


§  168]  MATTERS  OF   PRACTICE  AND  EVIDENCE.  397 

trademark  has  by  threats  of  legal  prosecution  comi>elled 
or  induced  others  to  enter  into  undertakings  to  desist 
from  the  use  of  the  name,  or  that  others  have  submitted 
to  injunctions  without  a  contest,  is  very  slight,  if  any, 
evidence  of  the  plaintiff's  right  to  use  the  mark.  In  a 
recent  case  before  the  House  of  Lords,  Lord  Davey 
said  in  regard  to  evidence  of  cases  in  which  other  per- 
sons had  submitted  to  injunctions  and  had  paid  the 
costs:  '^That  does  not  appear  to  me  to  be  very  strong 
evidence  in  favor  of  the  pursuers.  Of  course,  a  shop- 
keeper or  a  person  in  that  position  would  hesitate  a 
long  time  before  he  incurred  the  expense,  which  in  the 
case  of  a  trademark  or  in  a  patent  case  is  not  slight, 
of  defending  an  action  of  this  character;  probably  the 
value  to  him  of  the  trade  he  would  lose  would  not  in 
any  way  compensate  for  the  risk  he  would  incur.  There- 
fore, as  evidence  of  the  fact,  I  do  not  attach  much  im- 
portance to  those  cases.  "^^  An  interlocutory  decree  of 
one  court  appears  to  be  entitled  to  but  little  weight  in  a 
proceeding  before  another.*^ 

§  168.  Contempts.— It  is  provided  by  section  725  of 
the  United  States  Revised  Statutes  that  the  Courts  of 
the  United  States  shall  have  the  power  to  punish,  '*by 
fine  or  imjjrisonment,  at  the  discretion  of  the  court,  con- 
tempt of  their  authority;  provided,  that  such  power  to 
punish  contempts  shall  not  be  construed  to  extend  to  any 
cases  except  the  misbehavior  of  any  person  in  their  pres- 
ence, or  so  near  thereto  as  to  obstruct  the  administration 
of  justice,  the  misbehavior  of  any  of  the  officers  of  said 
courts  in  their  official  transactions,  and  the  disobedience 
or  resistance  by  any  such  officer,  or  by  any  party,  juror, 

Vichy  Springs  Co.,  99  Fed.  Rep.  now,  68  Fed.  Rep.  794.  And  to 
733.  But.  a  decision  of  the  En-  the  same  effect  see  Hohner  v. 
glish  high  court  of  chancery  ad-  Gratz,  50  Fed.  Rep.  369. 
verse  to  the  claimant  of  a  mark  is  40— Cellular  Clothing  Co.  v. 
not  a  bar  to  a  suit  for  infringement  Maxton,  L.  R.  (1899)  A.  C.  326-346. 
of  the  mark  brought  in  the  United  41— Walter  Baker  &  Co.  v.  San- 
States.     City  of   Carlsbad  v.  Kut-  ders,  80  Fed.Rep.889,  26  C.C.A.220. 


398  HOPKINS   ON   TRADEMARKS.  [§  168 

witness,  or  other  person,  to  any  lawful  writ,  process, 
order,  rule,  decree,  or  command  of  said  courts." 

Contempt  of  court  is  a  specific  criminal  offense.'*^  Im- 
position of  a  fine  for  contempt  is  a  judgment  in  a  crimi- 
nal case.^^  It  has  been  held  that  a  i3laintiff  who  circu- 
lates matter  prejudicial  to  the  defense  of  a  pending  ac- 
tion for  trademark  infringement  is  guilty  of  a  contempt,** 
as  has  also  been  held  of  a  plaintiff  who  published  a  false 
and  perv'^erted  construction  of  the  purpose  and  effect  of 
an  injunction.*^ 

By  far  the  greater  number  of  applications  to  commit 
for  contemjjt  in  the  class  of  cases  under  consideration 
are  based  upon  the  failure  of  the  party  enjoined  to  com- 
ply with  the  injunctive  decree.  Where  no  attempt  has 
been  made  toward  compliance  with  the  decretal  order, 
the  resjwndent  is,  of  course,  in  contempt  and  liable  to 
commitment,  like  any  other  contemnor.**'  But  where 
some  effort  has  been  made  to  comply  with  the  order,  but 
to  an  extent  not  satisfactory  to  the  complainant,  an  issue 
of  fact  is  raised  for  the  determination  of  the  trial  court, 
and  as  a  rule  its  findings  and  judgment  will  not  be  re- 
viewed on  appeal;*'^  and  where  the  contempt  proceedings 
are  referred,  the  court  is  reluctant  to  disturb  the  find- 
ings of  fact  made  by  the  referee.*^ 

It  is  a  contempt,  after  decree,  to  offer  the  infringing 
goods  for  sale,  even  though  no  sale  is  actually  effected  ;*'-^ 
nor  does  it  exempt  the  defendant  from  commitment  to 
show  that  he  intended  to  comply  with  the  decree,  if  in 

42 — Fischer  V.  Hayes,  6  Fed.  Rep.  46 — Rodgers  v.  Nowill   (2),  Cox, 

63-68.  Manual,  No.  115;    3  DeG.  M.  &  G. 

43 — New    Orleans   v.    Steamship  614. 

Co.,    20    Wall.    387-392;    Butler    v.  47— Devlin   v.    Devlin,   69    N.   Y. 

Fayerweather,    91   Fed.    Rep.    458;  212;   Cox,  Manual,  No.  463. 

33  C.  C.  A.  625;   63  U.  S.  App  123.  48— Hennessy  v.  Budde,  82  Fed. 

44 — Coats   V.    Chadwick,     L.    R.  Rep.  541. 

(1894)   1  Ch.  D.  347.  49— Marcovitch  v.  Bramble,  Wil- 

45 — Gorham  Mfg.  Co.  v.  Emery-  kins  &  Co.,  Cox,  Manual,  No.  595. 
Bird-Thayer     Dry    Goods    Co.,    92 
Fed.  Rep.  774-779. 


§  168J  ilATTEUS  OF   PRACTICE  AND   EVIDENCE.  399 

fact  he  has  not  complied  with  it.'^^  But  wherever  the 
court  determines  that  the  defendant  has  so  altered  his 
marks  or  packages  that  there  is  no  longer  any  danger 
of  the  public  mistaking  his  goods  for  those  of  the  plain- 
tiff, he  will  be  discharged.^!  Where,  however,  the  change 
is  only  sufficient  to  avoid  the  letter  of  the  decree,  and 
the  defendant's  mark  or  package  is  still  calculated  to 
X>romote  deception,  under  the  English  practice  the  in- 
junction may  be  enlarged  upon  the  hearing  of  the  con- 
tempt proceedings  so  as  to  cover  the  new  fraud,  even 
though  the  motion  to  commit  must  be  refused/'-  The 
rulings  of  the  courts  in  this  regard  have  taken  a  wide 
range.  There  have  been  cases  in  which  the  court  has 
declined  to  commit  upon  the  defendant  making  an  offer 
to  devise  such  changes  in  his  mark  as  would  meet  with 
the  approval  of  the  court,^^  and  others  where  the  court 
has  directed  the  defendant  to  make  such  changes  with 
the  alternative  of  being  committed.^^  Where  an  in- 
junction is  in  part  mandatoiy  and  in  part  prohibitive, 
and  the  mandatoiy  portion  is  suspended  by  an  appeal, 
the  court  cannot  punish  the  defendant  for  contempt  for 
the  violation  of  such  mandatory  portion,  although  his 
act  is  a  joint  violation  of  both  portions.^^ 

And  a  defendant  who  sells  a  stock  of  bottles,  labels 
and  wrappers  to  a  third  party,  after  a  decree  enjoining 
him  from  dealing  in  an  infringing  liquor  put  up  in  the 
bottles,  under  the  labels  and  enclosed  in  the  wrappers, 
under  circumstances  indicating  that  it  was  for  the  pur- 
pose of  enabling  the  purchaser  to  supply  defendant's 
former  customers  with  the  infringing  goods,  is  guilty  of 
contempt.^^  One  who  is  enjoined  from  preparing,  put- 
so — Devlin  v.  Devlin,  69  N.  Y.  54 — Rodgers  v.  Nowill  (2),  Cox, 
212;  Cox,  Manual,  No.  463.  Manual,  No.  115;   3  DeG.  M.  &  G. 

51 — Swift  V.   Dey,   4   Robertson,     614. 
611;    Cox,  319.  55 — Schwarz  v.   Superior  Court, 

52— Cartier  v.  May,  Cox,  Manual,     111  Cal.   106. 
No.  200.  56 — Societe  Anonyme  v.  Western 

53— Croft  v.  Day  f2),  Cox,  Man-     Distilling  Co.,   42  Fed.   Rep.  96. 
ual,  No.  77. 


400  HOPKINS   ON    TR.VDEMARKS.  [§169 

ting  up,  selling,  offering  or  advertising  for  sale,  any 
medicinal  beverage  made  from  fermented  milk  under  the 
name  of  "Matzoon"  is  guilty  of  contempt  if  he  aids 
another  in  doing  the  forbidden  acts,  as  the  agent  or 
servant  of  the  other.^'  Where  the  injunctive  order  runs 
against  agents,  servants  and  employes  ' 'there  is  no  re- 
straint laid  ujDon  the  agent,  servant,  or  employee  per- 
sonally, but  merely  as  the  agent,  servant,  or  employee 
of  the  enjoined  defendant.  "^^  One  enjoined  from  using 
a  firm  name,  who  continues  to  use  stationery  bearing  the 
name,  left  legible  though  having  ink  spread  over  it,  is 
giiilty  of  contempt,^^  as  is  one  who  publishes  a  cir- 
cular reflecting  upon  the  decree  under  which  he  is  en- 
joined.^^ 

The  foregoing  rulings  have  been  made  in  unfair  trade 
cases.  It  would  be  foreign  to  our  purpose  to  go  into  an 
extended  discussion  of  the  law  governing  contempts, 
which  ap])lies  to  this  as  to  all  other  classes  of  cases.  It 
is  well  to  note,  however,  that  in  the  federal  courts,  at 
least,  while  proceedings  in  contempt  are  not  reviewable 
on  error  or  appeal,  they  may  be  reached  by  certiorari.^^ 

§  169.  Affidavits. — Applications  for  restraining  orders 
and  preliminary  injunctions  are  usually  founded  upon 
and  resisted  by  affidavits.  A  preliminary  injunction 
will  not  be  awarded  on  ex  parte  affidavits  unless  in  a 
clear  case.^'^     rpj^^  complainant's  affidavits  in  chief  must 

57— Dadirrian     v.     Gullian,     79  33  C.  C.  A.  625;  63  U.  S.  App.  123; 

Fed.  Rep.  784.  holding  that  writ  of  error  will  lie 

58 — Ibid;    citing   Slater   v.   Mer-  to  review  an  order  committing  for 

ritt,  75  N.  Y.  268.  contempt  a  witness,  not  a  party  to 

59 — Hildreth  v.  McCaul,  74  N.  Y.  the   cause,   for  his   refusal   to  an- 

Supp.  1075.  swer  questions. 

60— Janney    v.    Pan-Coast     Ven-        62 — Lare  v.  Harper  &  Bros.,  86 

tilator  &   Mfg.   Co.    (2),   131   Fed.  Fed.   Rep.   481;    30   C.   C.   A.   373; 

Rep.  143.  New   York    Asbestos    Mfg.    Co.    v. 

61 — Re  Chetwood,  165  U.  S.  443-  Ambler  Asbestos  Air-cell  Covering 

462;    Schwarz   v.    Superior   Court,  Co.,    99    Fed.    Rep.     85;     Diamond 

111   Cal.   106.     Compare  Butler  v  Match   Co.   v.   Safe  Harbor  Match 

Fayerweather,   91   Fed.   Rep.   458;  Co.,  109  Fed.  Rep.  154. 


§  169  J  MATTERS  OF   PRACTICE  AKD   EVIDENCE.  401 

show  all  the  facts  necessary  to  establish  a  prima  facie 
right  to  the  injunctiou  sought.'"'  The  defendant's  affi- 
davits may  be  by  way  of  traverse,  in  which  case  no 
counter  affidavits  can  be  offered  by  the  comphiinant;  or 
they  may  set  up  matter  by  way  of  confession  and  avoid- 
ance, in  which  case  the  complainant  may  produce  affi- 
davits in  reply.  But  where  such  affidavits  are  offered 
by  the  comi)lainant  in  reply,  no  further  affidavits  can 
be  offered  by  the  defendant  by  way  of  rejoinder."^ 

All  affidavits  so  used  must  be  entitled  in  the  cause; 
otherwise  they  are  mere  extrajudicial  oaths,  perjury 
could  not  be  assigned  upon  them,  and  they  cannot  be 
considered  as  evidence.^""' 

63 — Leclancha     Battery     Co.    v.  65 — Hawley  v.  Donnelly,  8  Paige, 

Western  Electric  Co.,  21  Fed.  Rep.  415;     Buerk    v.     Imhaeuser,    Fed. 

538.  Case  No.   2107a;   10  Off.  Gaz  907; 

64— Day  V.   New    England    Car  Goldstein  v.  Whelan,  62  Fed.  Rep. 

Spring  Co.,  3  Blatch.  154-159.  124. 


26 


CHAPTER  XV. 

COSTS. 

§  170.  Generally.— In  cases  of  unfair  trade  the  same 
rules  as  to  costs  obtain  as  in  other  actions.  The  general 
rule  is  that  costs  follow  the  event.  A  successful  plain- 
tiff will  be  awarded  costs/  and  costs  will  be  refused  to 
one  who  is  unsuccessful. - 

So  costs  will  be  awarded  to  the  successful  plaintiff, 
even  though  he  is  denied  damages,^  and  against  an  in- 
fant,^ or  a  married  woman  having  a  separate  estate.^ 

§  171.  Avoiding  costs  by  submission.— We  have  had 
occasion  elsewhere  to  refer  to  the  iTile  laid  down  by 
Sir  George  Jessel,  that  the  complainant  in  actions  of 
the  character  now  under  consideration  should  not  give 


1 — Coats  V.  Holbrook,  2  Sandf. 
Ch.  586;  Cox,  20;  Seb.  7b;  Pierce  v. 
Frank,  15  L.  J.  Ch.  122;  Seb.  81; 
Rodgers  v.  Nowill,  6  Hare,  325; 
Seo.  82;  Burgess  v.  Hately,  26 
Beav.  249;  Seb.  169;  Burgess  v. 
Hills,  26  Beav.  244;  28  L.  J.  Ch. 
S56;  Seb.  170;  Collins  Co.  v. 
"Walker,  7  W.  R.  222;  Seb.  171; 
Jurgensen  v.  Alexander,  24  How. 
Pr.  269;  Cox,  298;  Seb.  211;  Edel- 
sten  V.  Edelsten,  1  DeG.  J.  &  S. 
185;  Seb.  213;  McAndrews  v.  Bas- 
sett,  4  DeG.  J.  &  S.  380;  Seb.  234; 
Chubb  V.  Griffiths,  35  Beav.  127; 
Seb.  255;  Field  v.  Lewis,  Seton 
(4th  ed.),  237;  Seb.  280;  Weed  v. 
Peterson,  12  Abb.  Pr.  N.  S.  178; 
Seb.  387;  Compagnie  Laferme  v. 
Hendrick,  Seb.  512;  Sawyer  v.  Kel-' 
logg,  9  Fed.  Rep.  601;  Cox,  Man- 
ual, 682;  McLean  v.  Fleming,  96 
U.  S.  245;  Chappell  v.  Davidson,  2 


K.  &  J.  123;  Seb.  136;  Re  Kuhn  & 
Co.'s  Trademark,  53  L.  J.  Ch.  238. 
Costs  "are  always  awarded  to 
the  successful  side,  unless  there 
has  been  something  in  the  conduct 
of  the  party  which  renders  such  a 
course  inequitable  and  unjust  to 
the  losing  side."  Nixon,  J.,  in 
Bunker  v.  Stevens,  26  Fed.  Rep. 
245-249. 

2— Bass  v.  Dawber,  19  L.  T.  N.  S. 
6z6;  Seb.  310;  Appeal  of  the  Put- 
nam Nail  Co.,  Cox,  Manual,  No. 
725;  Weener  v.  Brayton,  152  Mass. 
101. 

3 — Weed  v.  Peterson,  13  Abb.  Pr. 
N.  S.  178;   Seb.  387. 

4— Chubb  V.  Griffiths,  35  Beav. 
127;  Seb.  255;  Cory  v.  Gertcken,  2 
Madd.  49;  Woolf  v.  Woolf,  43  Sol. 
J.  127. 

5 — Nicholls  V.  Kimpton,  3  Times 
L.  R.   674. 


402 


§171 J  COSTS.  403 

notice  to  the  infringer  before  suit;''  and  it  has  been  held 
in  this  country  that  no  demand  or  notice  is  necessary.'^ 
It  is  of  the  gravest  irajwrtance  to  the  practitioner  to  bear 
this  rule  in  mind,  whether  he  be  for  the  plaintiff  or  de- 
fendant. A  failure  to  observe  it  will  oftentimes  involve 
an  innocent  and  injured  client  in  the  payment  of  costs 
which  would  otherwise  fall  upon  the  other  jjarty;  for  it 
is  no  defense  to  an  assessment  of  costs  against  the  de- 
fendant that  no  demand  was  made  or  notice  served  be- 
fore suit.*  A  defendant  who  makes  a  full  submission 
will  not  be  mulcted  in  costs.  Thus,  a  label  manufacturer 
who  had  innocently  made  labels  upon  the  order  of  a  cus- 
tomer evaded  costs  by  promising  to  desist  from  the  man- 
ufacture, and  offering  to  surrender  the  lithograph  stone 
with  which  the  work  was  done.*^  Lord  Eomilly,  in  a 
leading  case  in  which  the  defendants  were  forwarding 
agents  holding  as  bailee  goods  bearing  a  spurious  mark, 
gave  the  doctrine  this  succinct  expression:  ''It  is  his 
(the  defendant's)  duty  at  once  to  give  all  the  informa- 
tion required,  and  to  undertake  that  the  goods  shall  not 
be  removed  or  dealt  with  until  the  spurious  brand  has 
been  removed,  and  to  offer  to  give  all  facilities  to  the 
person  injured  for  that  purpose.  If,  after  that,  the  }3er- 
son  injured  files  a  bill,  though  he  will  be  entitled  to 
all  that  he  asks  in  the  shape  of  relief,  as  he  might  have 
got  it  all  without  suit,  he  will  not  get  from  such  defend- 
ant the  costs  of  the  suit,  and  he  may  have  to  pay  them."^** 
This  rule  has  been  uniformly  followed.^^  A  defend- 
ant may  make  such  an  offer  of  submission,  by  answer  or 

6 — Upmann  v.  Forester,  L.  R.  24  10 — Upmann  v.  Elkan,  L.  R.  12 

Ch.  D.  231.  Eq.  140;   Seb.  369. 

7— Sawyer   v.    Kellogg.     9    Fed.  11— Millington  v.  Fox,  3  Myl.  & 

^®P-  ^'^l-  Cr.  338;  Seb.  63;  Burnett  v.  Leuch- 

^■~^^^^-  ars,  13  L.  T.  N.  S.  495;    Seb.  253; 

9 — Bass,    Ratcliff   &    Gretton    v.  Wharton  v.  Thurber,  Cox,  Manual, 

Guggenheimer,  69  Fed.  Rep.  271.  663;    Nunn    v.    D'Albuquerque,    34 

Beav.    595. 


404  HOPKINS   ON   TRADEMARKS.  [§  172 

otherwise,  at  any  stage  of  the  proceedings,  and  so  tlirow 
■upon   the   plaintiff   all   costs   subsequently  accruing.^ - 

§  172.  Submission  to  avoid  costs  must  be  complete. 
—It  is  the  necessary  correlative  of  the  rule  stated  in  the 
preceding  section  that  no  submission  can  avail  a  de- 
fendant unless  it  is  full,  adequate  and  complete.  Thus  a 
submission,  otherwise  good,  was  rendered  ineffective  be- 
cause the  defendant  did  not  couple  with  it  an  offer  to 
pay  all  costs  accrued.^  ^  An  offer  of  submission  on  con- 
dition that  each  party  pay  his  own  costs  was  held  in- 
effective.^* Further  adjudication  in  support  of  the  gen- 
eral doctrine  of  this  section  will  be  found  in  the  note.^^ 

§  173.  Costs  refused  successful  defendant.— There  are 
a  number  of  instances  wherein  a  defendant  against  whom 
the  plaintiff  has  been  denied  relief  has  been  left  to  pay 
his  own  costs.  These  cases  are  not  always  predicated 
upon  the  defendant's  absolute  fraud,  for,  even  where 
fraud  could  not  be  established,  he  may  have  been  ^ilty 
of  conduct  so  suspicious  as  to  justify  the  imposition  of 
his  own  costs.^^     Thus  where  the  defendant  had  dealt 

12 — "If  the  defendant  had  offer-  Coats   v.   Holbrook,    2    Sandf.    Ch. 

ed  the  plaintiffs  all  they  were  en-  586;    Weed  v.  Peterson,    12    Abb. 

titled  to,  and  after  that  the  plain-  Pr.  N.  S.  178. 

tiffs  had   proceeded   in  the  suit,  I  14 — Moet  v.   Couston,    33    Beav. 

most  certainly  should  not  have  giv-  578. 

en    the   plaintiffs    a   penny   of  the  15 — Tonge  v.  Ward,  21  L.  T.  N. 

costs   incurred   after  that  period;  S.   480;     Seb.   321;     Coats  v.   Hol- 

indeed,  I  should  have  endeavored  brook,  2  Sandf.  Ch.  586;    Cox,  20; 

to   make  them   pay  them."     Lord  Seb.  79;    Fennessy  v.  Day,  55  L.  T, 

Romilly   in   Burgess    v.   Hills,    26  N.  S.  161. 

Beav.   244;    Seb.   170.     And  to  the  16— Talcott   v.    Moore,     6     Hun, 

same  effect  see  the  opinion  of  the  106;   Seb.  478;    Rose  v.  Loftus,  47 

same  Master  of  the  Rolls  in  Moet  L.   J,    Ch.    576;     Seb.    608.     Thus, 

V.  Couston,  33  Beav.  578;  Seb.  235.  vphere   both    plaintiff   and    defend- 

13 — Hutchinson  v.  Blumberg,  51  ant  made  cigars    falsely    marked 

Fed.  Rep.  829 ;    McAndrews  v.  Bas-  "Habana,"  the    English    court    of 

sett,  4  DeG.  J.  &  S.  380;    Seb.  234;  appeals  dismissed   the    bill    with- 

Burgess  v.  Hately,   26   Beav.   249;  out  costs  and   adjudged  the  costs 

Seb.    169;     Burgess    v.    Hills,    26  of  the  appeal  against  the  defend- 

Beav.   244;     Seb.  170;     Collins  Co.  ant.     Newman  v.  Pinto,  4  R.  P.  C. 

V.  Walker,  7  W.  R.  222;    Seb.  171;  508;    57  L.  T.  N.  S.  31. 


§  174]  COSTS.  405 

in  bitters,  and  assented  to  suggestions  that  they  might 
be  passed  off  on  the  public  as  the  "Hostetter's  Bitters" 
of  the  plaintiff,  the  court  tliought  the  facts  did  not  war- 
rant an  injunction,  but  that  the  defendant  had  invited 
the  litigation  by  his  conduct  and  ought  not  to  have  his 
costs.^''' 

§  174.  Miscellaneous  matters.— Innocent  wharfingers 
in  whose  possession  was  found  champagne  bearing  a 
false  brand,  and  who  were  made  parties  defendant  to 
an  action  but  at  once  submitted  to  act  as  the  court  might 
direct,  were  awarded  their  costs,  and  given  a  lien  for 
their  warehouse  charges,  and  that  lien  given  priority 
over  the  plaintiffs'  claim  for  costs.^'^ 

Where  the  defendant  is  a  retail  dealer,  who  has  acted 
innocently  and  handled  only  a  small  quantity  of  the  in- 
fringing goods,  a  plaintiff  may  not  be  awarded  costs 
even  though  the  injunction  issues.^ '^  Some  courts  ap- 
ply this  rule  where  it  appears  that  the  defendant's  sales 
have  not  been  large  enough  to  justify  the  expense  of 
taking  an  account.^^ 

AMiere  it  appeared  that  the  defendant  had  adopted 

17 — Hostetter  v.  Van   Vorst,   62  prosecute    those     who     place    the 

Fed.  Rep.  600.  spurious    goods   on     the    market; 

18 — Moet  V.   Pickering,  L.  R.   8  and    although     I     agree    that   the 

Ch.  D.  372.  plaintiifs   are  entitled    to    an    in- 

19 — Thus  where  a  small  retailer  junction,  yet  I  cannot  think  it  is 

was   charged     with     infringing    a  the  duty  of  the  court  in  every  case 

cigarette  trademark,  and    it    was  in  which  a  small  retail  dealer  who 

shown  that  the  transaction  related  has  innocently   (and  I  think  that 

only   to    five    hundred     cigarettes,  the  defendants  in  this   case  have 

valued  at  17s.   6d.,  which  the  de-  acted  innocently)  happened  to  pur- 

fendant  had   bought  in   ignorance  chase    a    small     quantity   of    the 

of  the  infringement,  it  was  said:  spurious   goods,     to    say    that   he 

"I  think  that  this  is  not  the  kind  ought  to  be  fixed  with  the  costs  of 

of  action   which   ought  to  be   en-  the  action."    Shilling,  J.,  in  Amer- 

couraged.    If  the  owner  of  a  trade-  ican  Tobacco  Co.  v.   Guest,  L.  R. 

mark  finds  that  it  is  being  pirated,  (1892)    1  Ch.  D.  630-632. 
surely  it  is  not  the  small  retailer         20 — Saxlehner  v.  Eisner  &  Men- 

who  ought  to  be  punished,  but  an  delson  Co.,  88  Fed.  Rep.  61-70. 
endeavor    ought    to    be    made    to 


406  HOPKINS   ON   TRADEMAEKS.  [§  174 

plaintiff's  trademark  (which  consisted  of  words  under- 
stood by  many  simply  to  indicate  quality),  and  did  so  in 
ignorance  of  the  plaintiff's  existence,  the  plaintiff  was 
granted  an  injunction  but  without  costs.^^  A  plaintiff 
may  be  denied  costs  because  of  his  delay  in  instituting 
suit.^^ 

If  in  his  bill  the  plaintiff  makes  specific  charges 
against  the  defendant  which  he  is  unable  to  substantiate 
with  proof,  he  may,  under  the  English  practice,  obtain 
an  injunction  with  costs,  but  be  adjudged  to  pay  all  of 
the  defendant's  costs  occasioned  by  the  maldng  of  the 
unfounded  charge.^^ 

Where  the  infringement  was  not  innocent,  but  the  de- 
fendants offered  to  pay  costs  and  publish  any  reasonable 
advertisements  announcing  that  they  had  no  connection 
with  the  plaintiffs,  it  was  held  that  by  ignoring  this  offer 
the  plaintiffs  had  lost  their  right  to  relief,  and  the  ac- 
tion was  dismissed.  It  is  doubtful  if  this  decision  would 
be  given  much  consideration  by  an  American  court.^^ 

One  who  procures  the  preparation  of  an  article  bear- 
ing an  infringement  of  another's  trademark  will  be 
liable  to  refund  to  the  manufacturer  such  reasonable 
sum  as  he  may  pay  to  the  owner  of  the  trademark  in 
compromise  of  an  action  for  the  infringement,  together 
with  the  costs  of  such  action.^^ 

In  regard  to  appeals,  the  same  general  rules  as  to 
costs  obtain  as  are  applied  by  the  inferior  courts.  Thus 
on  an  appeal  from  a  committal  for  contempt,  based  on 
the  violation  of  an  injunction  in  a  trademark  case,  the 
upper  court  sustained  the  ruling  of  the  lower,  but,  be- 
cause the  violation  seemed  open  to  dispute,  gave  no  costs 
of  the  appeal.^^ 

21— Millington  v.  Fox,  3  Myl.  &  24— Valentine  v.  Valentine,  31  L. 

Cr.  338;    Cox,  Manual,  642.  R.  Ir.  488. 

22 — Amoskeag  Mfg.  Co.  v.  Gar-  25 — Dixon  v.  Fawcus,  3   Ell.  & 

ner   (2),  54  How.  Pr.  298.  Ell.  537. 

23— Saxlehnsr  v.  Apollinaris  Co.,  26— Devlin  v.  Devlin,   69   N.   Y. 

L.  R.    (1897)   1  Ch.  893.  212. 


§  174]  COSTS.  407 

In  the  leading  case  of  McLean  v.  Fleming  the  defend- 
ant appealed  from  a  decree  awarding  the  plaintiff  an 
injunction  and  accounting.  The  supreme  court  reverse<l 
the  decree  as  to  the  accounting,  on  the  ground  that  the 
plaintiff  was  guilty  of  laches,  but  let  the  decree  of  in- 
junction stand.  It  then  gave  plaintiff  his  costs  in  the 
lower  court,  and  the  defendant  the  costs  of  the  appeal.^^ 

The  costs  of  an  unsuccessful  motion  to  commit  for 
contempt  will  be  taxed  against  the  moving  party. -^  The 
costs  of  contempt  proceedings  can  be  taxed  against  a 
defendant  only  where,  ui)on  the  facts,  he  might  have 
been  committed.^^  While  it  would  seem  the  better  prac- 
tice to  make  no  order  as  to  costs  upon  the  entry  of  inter- 
locutory decrees,  and  to  withhold  such  order  until  the 
entry  of  final  decree  upon  the  master's  report,  we  find 
very  respectable  authority  for  the  contrary  practice.^^ 

27— McLean    v.   Fleming,    96   U.  Rep.    561-571.     "Courts   of   equity, 

S.  245.  having  a  large  discretion   in  mat- 

28 — Hennessy  v.  Budde,  82  Fed.  ters  of  costs,  frequently  give  costs 

Rep.  541.  in  Intermediate  stages  of  a  cause, 

29 — Dence  v.  Brand,  W.  N.  1881,  without  waiting  for  the  final  de- 

p.  31.  cree."     Dick,  J.,  in  Avery  v.  Wil- 

30— The    Collins    Co.    v.    Oliver  son,  20  Fed.  Rep.  856-859. 
Ames  &  Son  Corporation,  18  Fed. 


APPENDIX. 


CONTENTS   OF  APPENDIX. 


A.  Trademark  Act  of  July  8,  1870.     Annotated. 

B.  Label  Registration  Act    of    June    18,    1874.     Annotated.     Patent 

Office  Rules,  and  Forms  relative  thereto. 

C.  Trademark  Act  of  August  14,  1876.    Annotated. 

D.  Trademark  Act  of  March  3,  1881.    Annotated. 

E.  Trademark  Act  of  August  5,  1882,  and  War  Department  Circulars. 

F.  Trademark  Provision  of  the  Tariff  Act  of  1897.    Annotated. 

G.  Trademark  Act  of  February  20,  1905.     Annotated.     Patent  Office 

Rules,  and  Forms  relative  thereto. 

H.     Trademark   Statutes   of   the   States   and   Territories.     Annotated. 

With  Forms  for  Registration  Applications. 
I.     Canadian  Trademark  and  Design  Act,  with  Rules  and  Forms. 

J.     Bills  of  Complaint  and  Answers.    Judicially  Approved. 

K.     Forms  of  Injunction — Interlocutory  and  Final  Decrees. 

L.     Classification  of  Registered  Trademarks. 

M.     American  and  English  Bibliography. 

N.     International  Convention  of  March  20,  1883. 

O.     Trademark  Provision  of  an  Act  incorporating  the  American  Na- 
tional Red  Cross. 

P.     Trademark  Laws  of  Foreign  Nations. 

Q.     Trademark  Treaties  with  Foreign  Nations. 


410 


APPENDIX   A. 

ACT  OF  CONGl^ESS  OF  JULY  8,  1870.^ 

Section  77.-  And  be  it  further  enacted,  that  any  per- 
son or  firm  domiciled  in  the  United  States,  and  any  cor- 
poration created  by  the  authority  of  the  United  States, 


1 — Although  this  act  is  no  long- 
er in  force,  having  been  held  un- 
constitutional, and  the  acts  of  1881 
and  1905  having  been  since  enacted, 
it  is  thought  advisable  to  set  forth 
the  earlier  act,  in  order  that  the 
decisions  under  it  may  be  under- 
stood. In  Leidersdorf  v.  Flint  (1), 
8  Biss.  327,  the  validity  of  the  act 
of  1870  was  questioned  by  the 
United  States  circuit  court,  on  the 
ground  that  the  constitution  of 
the  United  States  did  not  author- 
ize legislation  by  congress  on  the 
subject  of  trademarks,  except  such 
as  had  been  actually  used  in  com- 
merce with  foreign  nations  and 
among  the  several  states,  or  with 
the  Indian  tribes;  and  in  Trade- 
mark Cases,  100  U.  S.  82,  the  act 
was  formally  declared  by  the  su- 
preme court  to  be  on  this  ground 
unconstitutional  and  invalid.  But 
this  does  not  entitle  persons  hav- 
ing marks  registered  under  the 
invalid  act  to  recover  back  the 
fees  paid  by  them  (Woodman  v. 
United  States,  15  Ct.  of  CI.  541), 
though  they  will  be  credited  with 
such  fees  when  applying  for  regis- 
tration under  the  new  act.  See  Act 
of  1881,  sec.  6,  infra.  Nor  does 
the    invalidity  of  the  act    justify 

411 


the  disregard  of  injunctions  grant- 
ed under  the  general  jurisdiction 
of  the  court.  Unitea  States  v. 
Roche,  1  McCrary,  385.  And  it  has 
been  held  that  registration  of  a 
mark  under  the  invalid  act,  even 
without  reregistration  under  the 
act  of  1881,  is  suflBcient  to  prevent 
registration  of  a  similar  mark  un- 
der the  new  act  of  1881.  Ex  parte 
Lyon,  Dupuy  &  Co.,  28  Off.  Gaz. 
191.  Since  the  passing  of  the  act 
of  1870,  it  has  been  considered  in 
the  Patent  Office  that  while,  on  the 
one  hand,  the  benefits  of  registra- 
tion as  trademarks  were  to  be  re- 
served for  trademarks,  and  for 
trademarks  only  (e.  g.,  in  re 
Parker,  13  Off.  Gaz.  323,  registra- 
tion as  a  trademark  was  refused 
to  that  which  could  at  most 
amount  to  a  design),  so,  on  the 
other  hand,  it  was  only  by  regis- 
tering them  as  trademarks,  and 
not  by  patenting  them  as  designs 
(Ex  parte  King,  Comm.  Decis. 
1870,  p.  109;  Re  Whyte,  id.  1871, 
p.  304),  or  registering  them  as  la- 
bels (Re  Godillot,  6  Off.  Gaz.  641; 
Re  Simpson  &  Sons,  10  id.  333;  Ex 
parte  Davids  &  Co.,  16  id.  94;   Ex 

2— See  Act  of  1881,  sees.  1,  2. 


412 


APPENDIX  A. 


or  of  any  state  or  territory  thereof,  and  any  person,  firm, 
or  corjioration  resident  of  or  located  in  any  foreign  coun- 
try which  by  treaty  or  convention  affords  similar  privi- 
leges to  the  citizens  of  the  United  States,  and  who  are 
entitled  to  the  exclusive  use^  of  any  lawful  trademark, 
or  who  intend  to  ado^Dt  and  use  any  trademark,^  for  ex- 
clusive use  within  the  United  States,  may  obtain  protec- 


parte  Schumacher  &  Ettlinger  (1), 
ly  id.  791),  that  the  benefits  of 
the  statute  could  be  obtained  for 
trademarks.  Descriptive  words 
not  registerable  as  trademarks 
were  properly  allowed  to  be  regis- 
tered as  labels.  Ex  parte  Waefer- 
ling,  16  id.  746;  Ex  parte  Brigham, 
20  id.  891;  Ex  parte  Lutz,  33  id. 
1389;  and  see  Re  Park,  12  id.  2,  in 
which  it  was  sought  to  register  as 
part  of  a  label  a  device  for  which 
the  applicant  had  previously 
sought  registration  as  a  trade- 
mark. In  United  States  v.  Marble, 
22  id.  1366,  however,  the  supreme 
court  of  the  District  of  Columbia 
held  that  the  commissioner  of  pat- 
ents had  no  authority  to  refuse 
registration  to  a  label  merely  on 
the  ground  that  it  might  have  been 
registered  as  a  trademark;  but 
in  the  later  case  otEx  parte  Schu- 
macher &  Ettlinger  (2),  22  id. 
1291,  the  commissioner  again  re- 
fused registration  as  labels  to 
what  he  considered  to  be  trade- 
marks; and  in  Ex  parte  Moodie, 
28  id.  1271,  and  Ex  parte  Wiesel, 
36  id.  689,  the  commissioner  re- 
peated this  decision,  and  his 
course  was  in  the  former  case  up- 
held on  appeal  by  the  supreme 
court  of  the  District  of  Columbia 
in  Ex  parte  Moodie,  28  id.  1271. 
The  federal  courts  have  also  held 
that  a  trademark  must  be  regis- 
tered as  such,  and  not  copyrighted 


as  a  label.  Schumacher  &  Ett- 
linger V.  Wogram,  35  Fed.  Rep. 
210.  It  is  for  the  commissioner  to 
decide  whether  what  is  presented 
to  him  is  a  trademark  or  label.  Ex 
parte  Moodie,  28  Off.   Cas.  1271. 

3 — In  McElwee  v.  Blackwell,  15 
Off.  Gaz.  658.  it  was  held  that  al- 
though where  registration  had 
been  wrongfully  granted  to  one,  it 
might  subsequently  be  properly 
granted  to  another  who  was  really 
entitled  to  the  exclusive  use,  yet 
it  would  not  be  granted  to  another 
who  was  not  entitled  to  the  ex- 
clusive use,  even  though  he  might 
be  entitled  to  use  the  mark  to 
some  extent.  And  see  Wright  v. 
Simpson,  15  id.  968;  also  Sorg  v. 
Welsh,  16  id.  910,  as  to  admissions 
of  right  in  another;  and  Yale 
Cigar  Manufacturing  Co.  v.  Yale, 
30  id.  1183.  Under  the  act  of  1881 
registration  will  be  refused  where 
it  appears  that  the  applicant  is 
only  one  of  several  who  have  a 
right  to  use  the  mark.  Ex  parte 
Langdon,  61  Off.  Gaz.  286. 

4 — Under  these  words  a  new 
trademark  might  be  registered 
prior  to  any  actual  use.  Re  Roths- 
child, 7  Off.  Gaz.  220;  and  see 
Hoosier  Drill  Co.  v.  Ingels,  14  id. 
785.  This  is  not  the  case  under 
the  act  of  1881.  See  sees.  1  and  2, 
notes,  and  Ex  parte  Strasburger  it 
Co.,  20  Off.  Gaz.  155. 


ACT  OF  CONGRESS  OF  JULY  8,  1870. 


413 


tion  for  such  lawful  trademark--  by  complying  with  the 
following  requirements,*^  to  wit: 

First.  By  causing  to  be  recorded  in  the  Patent  Office/ 
the  names  of  the  parties  and  their  residence  and  place  of 
business,**  who  desire  the  protection  of  the  trademark. 

Second.  The  class  of  merchandise'*  and  the  particular 
description  of  goods^^  comprised  in  such  class,  by  which 
the  trademark  has  been  or  is  intended  to  be  appropriated. 


5— As  to  what  is  a  lawful  trade- 
mark, see  infra,  sec.  79.  Registra- 
tion cannot  make  a  lawful  trade- 
mark out  of  that  which  does  not 
contain  the  necessary  elements 
(Moorman  v.  Hoge.  2  Sawy.  78; 
Schumacher  &  Ettlinger  v. 
Schwenke  (2),  36  Off.  Gaz.  457); 
but  by  sec.  7  of  the  act  of  1881  reg- 
istration is  prima  facie  evidence  of 
ownership.  It  has  been  doubted 
whether  the  use  of  a  registered 
trademark  can  be  restrained 
(Decker  v.  Decker,  52  How.  Pr. 
218);  but  in  Glen  Cove  Manufac- 
turing Co.  V.  Ludeman,  23  Blatchf. 
46,  an  injunction  was  granted  in 
such  a  case.  See  also  Schumacher 
&  Ettlinger  v.  Schwenke  (2),  36 
Ofi!.  Gaz.  457.  Separate  registra- 
tion must  be  obtained  for  each 
mark  which  differs  from  another 
by  the  addition  of  a  symbol:  e.  g., 
"X,"  "XX,"  "XXX,"  were  held  to 
require  separate  registration.  Re 
English,  Comm.  Decis.  1870,  142; 
and  see  Re  Eagle  Pencil  Co.,  10 
Off.  Gaz.  981. 

6 — Absolute  compliance  with 
these  requirements  is  necessary  on 
the  part  of  applicants.  Re  Hank- 
inson,  8  Off.  Gaz.  89.  But  it  is  not 
necessary  that  the  very  words  of 


the  act  should  be  cited,  so  long  as 
the  spirit  of  it  is  satisfied.  Re 
Vidvard  &  Sheehan,  8  id.  143. 

7 — In  Lacroix  v.  Escobal,  37  La. 
Ann.  533,  it  was  held  that  a  French 
citizen,  who  had  not  deposited 
his  mark  in  the  United  States  pat- 
ent office,  as  required  by  the  con- 
vention of  1869  between  the  United 
States  and  France,  was  not  en- 
titled to  maintain  an  action  for  in- 
fringement. But  see  Society,  etc. 
de  la  Benedictine  v.  Micalovitch, 
36  Alb.  L.  J.  364. 

8 — The  registration  of  the  name 
of  a  firm  has  been  held  to  be  suf- 
ficient, without  giving  the  particu- 
lars as  to  each  of  the  partners. 
Smith  V.  Reynolds  (2),  3  Off.  Gaz. 
213;     10  Blatchf.  100. 

9 — This  requirement  has  been 
interpreted  to  exclude  from  regis- 
tration the  marks  of  persons  other 
than  manufacturers  or  merchants: 
e.  g.,  a  carpet  cleaner.  Re  Hankin- 
son,  8  Off.  Gaz.  89. 

10— It  has  been  held  that  a  de- 
scription of  the  class  and  goods  as 
"paints"  is  sufficient  (Smith  v. 
Reynolds  (2),  10  Blatchf.  100), 
and  so  with  "alcoholic  spirits"  (Re 
Boebm  &  Co.,  8  Off.  Gaz.  319) ; 
but  that  "fancy  goods"   is   insuffi- 


414 


APPENDIX  A. 


Third.  A  description  of  the  trademark  itself^ ^  with 
fac-similes  thereof^-  and  the  mode  in  which  it  has  been 
or  is  intended  to  be  applied  and  used.^^ 

Fourth.  The  length  of  time,  if  any,  during  which  the 
trademark  has  been  used.^* 

Fifth.  The  payment  of  a  fee  of  twenty-five  dollars,  in 
the  same  manner  and  for  the  same  purpose  as  the  fee 
required  for  patents.^  ^ 

Sixth.  The  compliance  with  such  regulations  as  may 
be  prescribed  by  the  commissioner  of  patents.^  ^ 


cient,  as  being  too  general  a  term. 
Re  Lisner,  13  id.  455.  Different 
persons  may  register  the  same 
trademark  for  different  descrip- 
tions of  goods  even  in  the  same 
class.  Sorg  v.  Welsh,  16  id.  910. 
In  Smith  v.  Reynolds  (2),  10 
Blatchf.  100,  and  s.  c.  (3),  3  id. 
213,  it  was  held  that  a  firm  which 
had  registered  a  trademark  for 
"paints"  was  not  entitled  to  re- 
strain the  use  of  the  mark  on 
white  lead  by  another  firm  which 
had  used  the  mark  on  that  variety 
of  paint  before  the  plaintiffs  had 
used  or  registered  their  mark;  and 
in  the  former  case  it  was  held  that 
the  registration  being  bad  as  to 
white  lead  was  bad  in  toto,  though 
but  for  that  it  might  have  been 
good. 

11 — The  trademark  must  be  suf- 
ficiently described  for  it  to  be  pos- 
sible to  clearly  distinguish  between 
the  essential  and  non-essential 
elements.  Re  Volta  Belt  Co.,  8  Off. 
Gaz.   144. 

12 — The  facsimile  limits  the  ver- 


bal description  of  the  mark.  Duke 
V.  Green,  16  Off.  Gaz.  1094. 

13 — The  previous  user  of  the  ap- 
plicants or  their  derivative  title 
must  be  stated.  Ex  parte  Consol- 
idated Fruit  Jar  Co.,  16  Off.  Gaz. 
679.  Only  one  example  of  the  mode 
of  use  will  be  admitted.  Re  Kim- 
ball, 11  id.  1109.  And  see  Smith 
V.  Reynolds  (2),  10  Blatchf.  100. 

14 — See  Ex  parte  Consolidated 
Fruit  Jar  Co.,  16  Off.  Gaz.  679. 

15 — A  fee  paid  can  only  be  re- 
covered when  it  was  paid  by  actual 
mistake:  e.  g.,  a  payment  in  ex- 
cess, or  one  not  required  by  law. 
When,  therefore,  an  application 
has  failed  because  the  proposed 
mark  was  not  registrable,  the  fee 
paid  cannot  be  recovered,  although 
a  renewed  application  for  the  reg- 
istration of  an  essentially  different 
mark  has  proved  successful.  Re 
Block  &  Co.,  14  Off.  Gaz.  235.  See 
note  1,  p.  411,  supra,  as  to  credit- 
ing fees  paid  under  this  invalid 
act. 

16 — See  sec.  81,  infra,  and  note 
thereto. 


ACT  OF  CONGRESS  OF  JULY  8,  1870.  415 

Seventh.  The  filing  of  a  declaration,^'^  under  the  oath 
of  the  person  or  of  some  member  of  the  firm  or  officer  of 
the  cor])oration,  to  the  effect  that  the  party  claiming 
protection  for  the  trademark  has  the  right  to  the  use  of 
the  same,  and  that  no  other  person,  firm  or  corjjoration 
has  the  right  to  such  use,  either  in  the  identical  form,  or 
having  such  near  resemblance  thereto  as  might  be  calcu- 
lated to  deceive,'^  and  that  the  descri})tion  and  fac- 
similes i)resented  for  record  are  true  copies  of  the  trade- 
mark sought  to  be  protected. 

Section  TS.^'-*  And  l>e  it  further  enacted,  chat  such 
trademark  shall  remain  in  force  for  thirty  years  from 
the  date  of  such  registration,  except  in  cases  where  such 
trademark  is  claimed  for  and  applied  to  articles  not 
manufactured  in  this  countrj-,  and  in  which  it  receives 
protection  under  the  laws  of  any  foreign  country  for  a 
shorter  period,  in  which  case  it  shall  cease  to  have  any 
force  in  this  country  by  virtue  of  this  act,  at  the  same 
time  that  it  becomes  of  no  effect  elsewhere,  and  during 
the  period  that  it  remains  in  force  it  shall  entitle  the 
person,  firm,  or  corporation  registering  the  same  to  the 
exclusive  use  thereof  so  far  as  regards  the  description 
of  goods  to  which  it  is  appropriated  in  the  statement 
filed  under  oath  as  aforesaid,  and  no  other  person  shall 
lawfully  use  the  same  trademark,  or  substantially  the 
same,  or  so  nearly  resembling  it  as  to  be  calculated  to 
deceive,  upon  substantially  the  same  description  of 
goods.^"    Provided  that  six  months  prior  to  the  expira- 


17 — As  to  the  necessity  for  the  person,  firm  or  corporation  has  a 

filing  of  this  declaration,  and  for  right   to   the  use   of   the   same,  or 

the   production    of    sufficient    evi-  substantially  the  same,  mark,  is  a 

dence  of  it,  on  a  trial  for  infringe-  suflScient  compliance  with  this  re- 

ment,  see  Smith  v.  Reynolds    (1),  quirement.     Re  Vidvard    &    Shee- 

10   Blatchf.    85,   where   an   injunc-  han,  8  Off.  Gaz.  143. 

tion  was  refused  on  the  ground  of  19 — See  Act  of  1881,  sees.  5,  7, 11 

the  deficiency  of  such  evidence.  20 — An  illegal  registration  by  a 

18 — A  declaration  that  no  other  part  owner  not  entitled  to  exclu- 


416  APPENDIX  A. 

tion  of  the  said  term  of  thirty  years,  application  may  be 
made  for  a  renewal  of  such  registration,  under  regula- 
tions to  be  prescribed  by  the  commissioner  of  patents, 
and  the  fee  for  such  renewal  shall  be  the  same  as  for  the 
original  registration,  certificate  of  such  renewal  shall  be 
issued  in  the  same  manner  as  for  the  original  registra- 
tion, and  such  trademark  shall  remain  in  force  for  a 
further  term  of  thirty  years ;  And  provided  further,  that 
nothing  in  this  section  shall  be  construed  by  any  court  as 
abridging  or  in  any  manner  affecting  unfavorably  the 
claim  of  any  person,  firm,  corporation,  or  company  to 
any  trademark  after  the  expiration  of  the  term  for  which 
such  trademark  was  registered. 

Section  79.-^  And  be  it  further  enacted,  tliat  any  per- 
son or  corporation  who  shall  reproduce,  copy,  counter- 
feit, or  imitate  any  such  recorded  trademark,  and  affix 
the  same  to  goods  of  substantially  the  same  description, 
properties  and  qualities  as  those  referred  to  in  the  regis- 
tration,- shall  be  liable  to  an  action  on  the  case  for 
damages  for  such  unlawful  use  of  such  trademark  at  the 
suit  of  the  owner  thereof  in  any  court  of  competent  juris- 
diction in  the  United  States,  and  the  party  aggrieved 
shall  also  have  his  remedy  according  to  the  course  of 
equity  to  enjoin  the  wrongful  use  of  his  trademark,  and 
to  recover  comi>ensation  therefor  in  any  court  having 
jurisdiction  over  the  person  guilty  of    such    wrongful 

sive  use,  was  held  not  to  justify  21— See  Act  of  1881,  sees.  3,  7. 
issuing  another  certificate  to  an-  22— See  Osgood  v.  Rockwood,  11 
other  part  owner  of  the  same  mark,  Blatchf.  310;  Fed.  Cas.  No.  10605, 
in  order  to  put  him  on  an  equal  where  it  was  held  that  persons 
footing  in  court.  McElwee  v.  who  had  registered  a  trademark 
Blackwell,  15  Off.  Gaz.  658.  In  an  for  prints  made  according  to  a  pat- 
interference,  the  applicant  was  ented  process  were  not  entitled  un- 
granted  registration  as  against  a  der  this  act  to  an  injunction 
prior  registrant  whose  user  had  against  a  person  who  had  used  the 
been  experimental  and  interrupted,  mark  on  prints  not  made  in  ac- 
Sternberger  v.  Thalheimer,  3  Off.  cordance  with  the  patent. 
Gaz.  120. 


ACT  OF  CONGRESS  OF  JULY  8,  1870. 


417 


use.^^  The  commissioner  of  patents-*  shall  not  receive 
and  record  any  proposed  trademark  which  is  not  and 
cannot  become  a  lawful  trademark,^'^  or  which  is  merely 


23 — The  United  States  circuit 
courts  had  jurisdiction  under  this 
act  In  cases  of  infringement  of 
trademarlt,  even  when  both  par- 
ties were  citizens  of  the  same 
state.  Duwel  v.  Bohmer,  14  Off. 
Gaz.  270;  but  see  sees.  7  and  11  of 
the  act  of  1881. 

24 — The  validity  of  the  decisions 
of  the  acting  commissioner  was 
upheld  in  Simpson  v.  Wright  (2), 
15  Off.  Gaz.  293. 

25 — The  question  what  may  be 
registered  as  being  a  "lawful  trade- 
mark" has  been  considered  in 
many  cases.  The  device  of  a 
crown  is  a  good  trademark.  Smith 
V.  Reynolds  (2),  10  Blatchf.  100. 
The  arms  of  one  of  the  states 
could  not  be  registered  as  a  trade- 
mark. Ex  parte  Davids  &  Co.,  16 
Oil.  Gaz.  94.  And  it  has  been  held 
that  the  same  is  the  case  with  the 
Freemasons'  square  and  compass, 
Re  Tolle,  2  id.  415;  and  the  word 
"Masonic,"  Ex  parte  Smith  (3),  16 
id.  764.  In  Re  Thomas,  14  id.  821, 
the  Freemasons'  symbols  were  al- 
lowed to  be  registered  in  combina- 
tion, and  Re  Tolle,  supra,  was 
overruled.  In  Ex  parte  King  (2), 
46  id.  119,  the  decision  in  Re 
Thomas,  14  id.  821,  was  followed, 
and  the  design  of  the  badge  adopt- 
ed by  the  Grand  Army  of  the  Re- 
public was  allowed  to  be  registered 
as  a  trademark  for  writing  paper 
by  a  person  who  had  no  connection 
with  that  society,  and  it  was  said 
that,  that  society  not  having  used 
27 


their  badge  as  a  mark  on  writing 
paper,  they  would  be  infringing 
the  applicant's  rights  If  they  were 
to  begin  to  do  so.  The  words 
"Knights  of  Labor"  were  refused 
registration  as  a  mark  for  whisky 
on  this  ground  and  because  decept- 
ive. Ex  parte  Bloch  &  Co.,  40  Off. 
Gaz.  443.  A  word  which  has  be- 
come common,  e.  g.,  "Calhoun" 
plow,  cannot  be  registered.  Re 
Hall  &  Co..  13  id.  229.  Registra- 
tion has  been  refused  to  the  fol- 
lowing words  and  expressions,  on 
the  ground  of  descriptiveness: 
"Beeswax  oil,"  Re  Hauthaway  (1), 
Comm.  Decis.  1871,  97;  s.  c.  (2), 
id.  284;  "Razor  Steel,"  Re  Rob- 
erts (4),  id.  100;  "Invisible"  face 
powder.  Ex  parte  Palmer,  id.  289; 
"A.  Richardson's  Patent  Union 
Leather  Splitting  Machine,"  Re 
Richardson,  3  Off.  Gaz.  120;  "Fiir 
Familien-Gebrauch,"  and  "Law- 
rence Feiner  Familien-Flannel," 
Re  Lawrence,  10  id.  163;  "Iron 
Stone"  drain  pipes.  Re  Rader  & 
Co.,  Comm.  Decis.,  1878,  67; 
"Croup  Tincture,"  Re  Roach,  10 
Off.  Gaz.  333;  "Crack-proof"  In- 
dia rubber,  Re  Goodyear  Rubber 
Co.,  11  id.  1062;  "Evaporated"  ar- 
ticles of  food.  Ex  parte  Alden,  15 
id.  389;  "Standard  A"  cigars,  Ex 
parte  Cohn  (1),  16  id.  680;  "Drug- 
gists' Sundries,"  Ex  parte  Cohn 
(2),  16  id.  680;  "Safety"  powder, 
Ex  parte  Safety  Powder  Co.,  16  id. 
136;  "Medicated  Prunes,"  Ex  parte 
Smith   (2),  16  id.  679;  "SaUn  Pol- 


418 


APPENDIX  A. 


ish,"  shoe  polish,  Re  Brigham, 
Comm.  Decis.  1881,  38;  "Swing" 
scythe  socltets,  Ex  'parte  Thomp- 
son, Derby  &  Co.,  16  Off.  Gaz.  137; 
"Granulated  Dirt  Killer"  soap,  Ex 
parte  Waeferling,  16  id.  764; 
"Famous,"  merchandise  generally. 
Re  Brand  Stove  Co.,  62  Off.  Gaz. 
588;  and  "Splendid"  flour.  Ex 
parte  Stokes,  64  Off.  Gaz.  437.  And 
the  same  has  been  the  case  with 
respect  to  the  figure  of  a  fish  for 
fishing  lines.  Re  Pratt  &  Farmer, 
10  id.  866;  and  the  representation 
of  a  twig  with  three  leaves  and  a 
plum,  for  prunes,  Ex  parte  Smith 
(2),  16  id.  679;  and  see  Popham 
V.  Wilcox,  66  N.  Y.  69.  On  the 
other  hand,  "The  Blanchard 
Churn,"  Re  Porter  Blanchard's 
Sons,  Comm.  Decis.  1871,  97; 
"Beaverine"  boots  and  shoes.  Re 
Francis  &  Mallon,  id.  283;  and 
"Dr.  Lobenthal's  Essentia  Antiph- 
thisica,"  Re  Rohland,  10  Off.  Gaz. 
980,  have  been  admitted  to  regis- 
tration as  being  non-descriptive. 
In  a  series  of  cases  registration 
has  been  refused  on  the  ground 
that  the  term  claimed,  if  properly 
applicable  to  the  goods  with  re- 
spect to  which  it  was  used,  was  de- 
scriptive, but  if  not,  was  deceptive: 
e.  g.,  "Bromo-Quinine,"  Re  Grove, 
67  Off.  Gaz.  1447;  "American  Sar- 
dines," Re  American  Sardine  Co., 
3  id.  495;  "Egg  Macaroni,"  Re 
Bole  Bros.,  12  id.  939;  "Cachemire 
Milano,"  Re  Warburg  &  Co.,  13  id. 
44;  "French  Paints,"  Ex  parte 
Marsching  &  Co.,  15  id.  294;  "Lon- 
don" animal  foods.  Ex  parte 
Knapp,  16  id.  318;  but  see  Re 
Green,  8  id.  729,  where  registration 


was  granted  to  "German  Syrup." 
On  the  latter  ground  of  deceptive- 
ness,  the  word  "patent"  cannot  be 
registered  as  a  part  of  a  mark  for 
an  article  made  under  an  expired 
patent.  Re  Richardson,  3  id.  120. 
A  geographical  name  is  not  usual- 
ly registrable.  Armistead  v.  Black- 
well,  1  id.  603,  "Durham"  tobacco; 
Re  Tolle,  2  id.  415,  "Cherry  Street 
Mills,"  and  "Market  Street  Mills;" 
Ex  parte  Knapp,  16  id.  318,  "Lon- 
don" animal  foods;  Ex  parte 
Marsching  &  Co.,  15  id.  294, 
"French  Paints;"  Ex  parte  Far- 
num  &  Co.,  18  id.  412,  "Lancaster" 
goods.  But  such  a  name  may  be 
registered  when  arbitrarily  select- 
ed. Re  Cornwall  (2),  12  id.  312, 
"Dublin"  soap.  Similarly,  numer- 
als may  be  registered  when  arbi- 
trarily selected.  Kinney  v.  Allen, 
1  Hughes,  106;  Ex  parte  Dawes  & 
Fanning,  1  Off.  Gaz.  27;  American 
Solid  Leather  Button  Co.  v.  An- 
thony, 15  R.  I.  338.  But  not  other- 
wise. Re  Eagle  Pencil  Co.,  10  Off. 
Gaz.  91.  It  has  been  held  that  a 
peculiarity  in  the  form  of  a  barrel 
is  not  registrable  as  a  trademark, 
Moorman  v.  Hoge,  2  Sawy.  78 ;  nor  a 
representation  of  such  barrel  when 
applied  to  the  goods  contained  in 
it.  Ex  parte  Halliday  Bros.,  16  Off. 
Gaz.  500;  nor  is  a  special  kind  of 
barrel-hoop  registrable.  Re  Kane 
&  Co.,  9  id.  105.  But  see  Cook  v. 
Starkweather,  13  Abb.  Pr.  N.  S. 
392,  A  special  collar  box  was  held 
not  to  constitute  a  trademark,  Car- 
rington  v.  Libby,  14  Blatchf.  128; 
and  a  sampler  pattern  was  refused 
registration.  Re  Parker,  13  Off- 
Gaz.  323;     and  a  strip  of  tobacco 


ACT  OF  CONGRESS  OF  JULY  8,  1870. 


419 


Intended  to  be  wrapped  around  the 
mouthpiece  of  cigarettes,  on  the 
ground  that  it  was  Intended  to 
serve  purposes  of  convenience 
rather  than  of  identification.  Re 
Gordon,  12  id.  517;  and  the  use  of 
a  tin  tag  or  ticket  on  the  goods, 
irrespective  of  shape  and  de- 
sign, is  no  trademark,  Lorillard  v. 
Pride,  28  Fed.  Rep.  434;  though  a 
tin  tag  of  special  shape,  size  and 
color  may  be,  Lorillard  v.  Wight, 
15  Fed.  Rep.  383.  There  is  no 
trademark  in  the  shape  of  a  plug 
of  tobacco..  Liggett  &  Myers  To- 
bacco Co.  V.  Hymes,  20  Fed.  Rep. 
883;  or  of  a  box.  Sawyer  v.  Horn, 
4  Hughes,  239;  Ball  v.  Siegel,  116 
111.  137;  or  of  sticks  of  chewing 
gum,  Adams  v.  Heisel,  31  Fed. 
Rep.  279;  or  of  the  frame  of  a 
sewing  machine  originally  made 
under  a  patent,  Wilcox  &  Gibbs 
Sewing  Machine  Co.  v.  Gibbons' 
Frame,  21  Blatchf.  431;  Brill  v. 
Singer  Manufacturing  Co.,  41  Ohio 
St.  127;  nor  in  a  manner  of  ar- 
ranging in  boxes  cakes  of  soap 
wrapped  in  differently  colored  pa- 
per wrappers,  Davis  v.  Davis,  27 
Fed.  Rep.  490;  nor  in  a  novi  de 
plume,  Clemens  v.  Belford,  11  Biss. 
459.  But  registration  has  been 
granted  to  a  peculiarly  shaped 
stick  intended  to  be  so  placed  in 
a  roll  of  carpet  as  to  show  an  oc- 
tagonal ring  at  each  end,  Lowell 
Manufacturing  Co.  v.  Larned,  Fed. 
Cas.  No.  8570.  Registration  can- 
not be  granted  to  minor  and  non- 
essential features  in  a  compound 
mark.  Ex  parte  Coats,  16  Off.  Gaz. 
544.  Occasionally  a  mark  has  been 
allowed  to  be  registered  in  alter- 
native forms,  e.  g.,  "The  Star 
Shirt,"  the  same  words  with  the 
figure  of  a  star,  and  "The  *  Shirt." 
Morrison  v.  Case,  9   Blatchf.  548; 


the  figure  of  a  lion,  the  word 
"Lion,"  or  both,  Re  Weaver,  10  Off. 
Gaz.  1;  and  see  Re  Park,  12  id.  2; 
Re  Thomas,  14  id.  821;  Ex  parte 
Peper,  16  id.  678.  A  bad  trade- 
mark does  not  become  a  good  one 
by  the  addition  of  unobjectionable 
elements.  Re  Blakeslee  &  Co., 
Comm.  Decis.  1871,  284,  "Cundu- 
rango  Ointment  Co.;"  Re  Dick  & 
Co.  9  Off.  Gaz.  538.  "D.  D.  &  Co. 
tasteless"  drugs;  Re  Rader  &  Co., 
13  id.  596,  "Iron  Stone"  in  an  oval 
border.  But  it  appears  to  be  possi- 
ble for  two  marks,  which  separate- 
ly are  not  good  trademarks,  to 
form  one  in  combination.  Ex  parte 
Davids  &  Co.,  16  id.  94.  A  trade- 
mark cannot  be  registered  for  the 
purpose  of  being  used  by  all  the 
members  of  an  association  on 
goods  of  any  quality,  nor  can  a 
mark  which  is  intended  to  be  used 
in  furthering  a  scheme  for  the  re- 
straint of  trade.  Ex  parte  Cigar 
Makers'  Association,  16  id.  958; 
and  in  Schneider  v.  Williams,  44 
N.  J.  Eq.  391,  the  court  refused  to 
protect  such  a  mark  at  the  in- 
stance of  a  member  of  the  associa- 
tion. In  Strasser  v.  Moonelis.  108 
N.  Y.  611;  People  v.  Fisher,  57  N. 
Y.  Sup.  Ct.  552;  Allen  v.  McCar- 
thy, 37  Minn.  347;  and  Bloete  v. 
Simon,  49  Abb.  N.  C.  88,  however, 
a  different  view  was  taken  of  the 
propriety  of  such  a  mark.  It  seems 
that  the  decision  of  a  competent 
court  as  to  the  validity  of  a  mark 
is  binding  upon  the  patent  oflBce. 
Re  India-rubber  Comb  Co.,  8  Off. 
Gaz.  905.  If  an  application  is  re- 
fused on  the  ground  that  the  pro- 
posed mark  is  not  registrable,  a 
renewed  application  for  the  regis- 
tration of  a  mark  not  open  to  ob- 
jection must  be  treated  as  a  new 
application,  and  it  cannot  be  treat- 


420 


APPENDIX  A. 


the  name  of  a  person,  fiiiu,  or  corporation  only,^®  unac- 
companied by  a  mark  sufficient  to  distinguish  it  from  the 
same  name  where  used  by  other  persons,  or  which  is 
identical  with  the  trademark  appropriated  to  the  same 
class  of  merchandise  and  belonging  to  a  different  owner 
and  already  registered  or  received  for  registration,  or 
which  so  nearly  resembles  such  last  mentioned  trade- 
mark as  to  be  likely  to  deceive  the  public.^"  Provided, 
that  this  section  shall  not  prevent  the  registry  of  any 
lawful  trademark  rightfully  used  at  the  time  of  the  pas- 


sage of  this  act.-^ 

ed  as  an  amendment  of  the  original 
application,  nor  can  the  fee  orig- 
inally paid  be  returned.  Re  Block 
&  Co.,  14  id.  235. 

26— Thus,  in  Re  Rowe  &  Post, 
9  Off.  Gaz.  496,  the  name  "The 
New  York  Cutlery  Co."  was  re- 
fused registration  as  a  new  mark. 
As  to  the  registration  of  names  as 
old  marks,  see  Re  Porter  Blanch- 
ard's  Sons,  Comm.  Decis.  1871,97; 
Re  Roberts  (1),  id.  113;  s.  c.  (2), 
id.  100;  s.  c.  (3),  id.  101;  Re  India- 
rubber  Comb  Co.,  8  Off.  Gaz.  905; 
Re  Consolidated  Fruit  Jar  Co.,  14 
id.  269;  Ex  parte  Davids  &  Co.,  16 
id.  94;  Re  Creedmore  Cartridge 
Co.,  56  id.  1333.  The  prohibition 
does  not  extend  to  the  registration 
of  the  name  of  a  person  other  than 
the  applicant,  and  such  names 
may  be  registered,  at  all  events 
with  their  owners'  consent,  if  liv- 
ing. Ex  parte  Sullivan  &  Burke, 
16  id.  765;  Ex  parte  Pace,  Talbott 
&  Co.,  16  id.  909. 

27 — Thus,  in  Re  American  Lu- 
bricating Oil  Co.,  9  Off.  Gaz.  687, 
registration  was  refused  to  the 
word  "Star"  as  a  trademark  on 
oil,  the  device  of  a  star  having 
already  been  registered  for  the 
same  article;     so   in    Re    Coggin, 


Kidder  &  Co.,  11  id.  1109,  to  a  de- 
vice in  which  the  principal  feature 
was  the  name  "Haxall,"  which  had 
long  been  the  trademark  of  an- 
other firm;  so  in  Re  Bush  &  Co., 
10  id.  164,  to  a  combination  mark 
consisting  of  the  applicant's  own 
registered  trademark  and  two  other 
devices  appropriated  by  other 
firms;  so  in  Ex  parte  Claire,  15  id. 
248,  to  the  words  "Black  Swan," 
the  word  "Swan"  being  already 
registered;  so  in  Ex  parte  Smith 
(1),  16  id.  679,  to  "A.  S.  California 
Family  *  Soap,"  "California"  and 
"  *  "  being  already  separately  on 
the  register;  and  see  Ex  parte 
Weisert  Bros.,  16  id.  680.  On  the 
other  hand,  in  Re  Imbs,  10  id.  463, 
registration  was  granted,  notwith- 
standing that  two  other  marks 
contained  somewhat  similar  feat- 
ures; and  in  Re  Cornwall  (1),  12 
id.  138,  a  device  of  a  star  and  a 
crescent  was  registered,  although 
a  star  had  previously  been  regis- 
tered. 

28 — Under  this  proviso  registra- 
tion was  granted  to  a  name  used 
as  a  trademark  before  1870,  e.  g., 
"The  India-rubber  Comb  Co.  of 
New  York,"  Re  India  Rubber  Comb 
Co.,  8  Off.  Gaz.  905;    "The  Rubber 


ACT  OF  CONGRESS  OF  JULY  8,  1870. 


421 


Section  SO.^"  And  be  it  further  enacted,  that  the  time 
of  the  receipt  of  any  trademark  at  the  Patent  Office  for 
registration  shall  be  noted  and  recorded  and  copies  of 
the  trademark  and  of  the  date  of  the  receipt  thereof,  and 
of  the  statement  filed  therewith,  under  the  seal  of  the 
Patent  Office,  certified  by  the  commissioner,  shall  be  evi- 
dence in  any  suit  in  which  such  trademark  shall  ha 
brought  into  controversy. 

Section  81.^*^  And  be  it  further  enacted,  that  the  com- 
missioner of  patents  is  authorized  to  make  rules  and 
regulations"'^  and  to  prescribe  forms  for  the  transfer  of 


Clothing  Co.,"  Re  Rubber  Clothing 
Co.,  10  Id.  111.  See  Re  Dole  Bros., 
12  id.  939;  Re  Consolidated  Fruit 
Jar  Co.,  14  id.  369;  Ex  par^e  Con- 
solidated Fruit  Jar  Co.,  16  id.  679. 
This  saving  proviso,  is,  however, 
omitted  from  the  act  of  1881,  so 
that  the  prohibition  as  to  names, 
etc.,  is  universal.  See  Act  of  1881, 
sec.  3,  and  Ex  parte  Fairchild,  21 
Off.  Gaz.  789,  in  which  case  regis- 
tration was  refused  to  a  name 
which  had  been  used  as  a  trade- 
mark for  twenty  years,  and  had 
been  registered  under  the  Act  of 
1870. 

29— See  Act  of  1881,  sees.  3,  4. 

30— See  Act  of  1881,   sec.   12. 

31 — It  was  formerly  decided  that 
the  authority  given  to  the  commis- 
sioner by  section  81  to  make  regu- 
lations empowered  him  to  declare 
an  interference  in  a  trademark 
case,  for  the  purpose  of  deciding  a 
question  of  title  to  the  trademark, 
on  the  analogy  of  the  practice  in 
patent  cases.  Lantz  Bros.  &  Co.  v. 
Schultz  &  Co.,  9  Off.  Gaz.  791; 
Duke  V.  Green,  16  id.  1094.  And 
though  it  was  thought  in  Swift  v. 
Peters,  11  id.  1110,  that  the  ques- 
tion whether  a  registered  propri- 
etor of  a  mark  was  entitled  to  the 


exclusive  use  of  it  against  an  ex- 
partner  was  a  question  for  a  court 
of  law,  and  not  for  the  office,  it 
■was  held  in  Hoosier  Drill  Co.  v. 
Ingels,  14  id.  785,  that,  in  investi- 
gating the  title  of  the  mark,  all 
matters  relating  to  the  ownership 
should  be  gone  into;  and  in  Han- 
ford  V.  Wescott,  16  id.  1181,  Fed. 
Cas.  No.  6022,  it  was  held  that  a 
decision  of  the  examiner  of  inter- 
ferences, unappealed  from,  was 
conclusive  as  to  the  right  to  a 
mark;  and  see  Josselyn  v.  Swezey 
&  Dart,  15  Off.  Gaz.  702,  as  tore- 
opening  the  evidence  taken  on  an 
interference,  and  Simpson  v. 
Wright  (1),  15  id.  248,  and  s.  c. 
(2),  15  id.  293,  as  to  rehearing  an 
interference.  After  the  case  of 
United  States  v.  Steffens,  100  U. 
S.  82,  it  was  held  that  the  Patent 
Office  has  no  longer  any  authority 
to  decide  questions  of  disputed 
titles  to  trademarks,  or  to  declare 
interferences  in  such  cases.  Brauu 
&  Co.  V.  Blackwell,  19  Off.  Gaz. 
481;  and  see  Ex  parte  Stvashurger 
&  Co.,  20  id.  155.  and  Jacoby  &  Co. 
v.  Lopez  &  Co.,  23  id.  342.  And  in 
Yale  Cigar  Mfg.  Co.  v.  Yale.  30  id. 
1183,  it  was  decided  that  a  declara- 
tion of  interference  is  authorized 


422  APPENDIX  A. 

the  right  to  use  such  trademarks,  conforming  as  nearly 
as  practicable  to  the  requirements  of  the  law  respecting 
the  transfer  and  transmission  of  copyrights. 

Section  82.^-  And  be  it  further  enacted,  that  any  i^er- 
son  who  shall  procure  the  registry  of  any  trademark, 
or  of  himself  as  the  owner  thereof,  or  an  entry  respect- 
ing a  trademark,  in  the  Patent  Office  under  this  act,  by 
making  any  false  or  fraudulent  representations  or  decla- 
ration verbally  or  in  writing,  or  by  any  fraudulent  means, 
shall  be  liable  to  pay  damages  in  consequence  of  any 
such  registry  or  entiy  to  the  jDcrson  injured  thereby,  to 
be  recovered  in  an  action  on  the  case  in  any  court  of 
competent  jurisdiction  within  the  United  States. 

Section  83.^^  And  be  it  further  enacted,  that  nothing 
in  this  act  shall  jorevent,  lessen,  impeach  or  avoid,  any 
remedy  at  law  or  in  equity  which  any  party  aggrieved 
by  any  wrongful  use  of  any  trademark  might  have  had 
if  this  act  had  not  been  passed.^'* 

Section  84.^^  And  be  it  further  enacted,  that  no  action 
shall  be  maintained  under  the  provisions  of  this  act  by 
any  person  claiming  the  exclusive  right  to  any  trademark 
which  is  used  or  claimed  in  any  unlawful  business  or 
upon  any  article  which  is  injurious  in  itself,  or  upon  any 
trademark  which  has  been  fraudulently  obtained,  or 
which  has  been  formed  and  used  with  the  design  of  de- 

by  section  3  of  the  act  of  1881.    In  register,  practically  to  displace  the 

such    cases   the   only   duty   of  the  registered  owner,  though  his  mark 

office  is  to  decide  whether  the  op-  is  not  removed  from  the  register, 

ponent  has  or  has  not  a  better  title  Ibid.     For  the  present  rule  as  to 

than  the  applicant,  not  to  decide  interferences  see  note  7  to  sec.  3 

any  further  question.    Ibid.    If,  on  of  the  Act  of  1881;    and  see  §  7, 

an  interference  between  an  appli-  A'ct  of  1905. 

cant  and  a  registered  owner  with  32 — See  Act  of  1881.  sec.  9. 

respect    to    the    same    mark,  the  33 — See  Act  of  1881,  sec.  10. 

right  to  registration  is  adjudged  to  34 — See  Osgood  v.  Rockwood,  11 

the  applicant,  notwithstanding  the  Blatchf.  310;    Fed.  Cas.  No.  10605; 

opposition  of  the  registered  owner,  United  States  v.  Roche,  1  McCrary, 

the  result  is,  while  strictly  giving  385;    Fed.  Cas.  No.  16180. 

the  applicant  merely  the  right  to  35 — See  Act  of  1881,  sec.  8. 


ACT  OF  CONGRESS  OF  JULY  8,  1870. 


423 


ceiving  the  public  in  the  purchase  or  use  of  any  article 
of  merchandise.^" 

36 — It  seems   that  this  act   pro-     stead  v.  Blackwell,  1  Off.  Gaz.  603 


vided  no  means  for  removing  from 
registration  a  mark  which  was 
wrongfully  registered,  e.  g.,  a  mark 
which  did  not  contain  any  of  the 
essential    particulars.      See   Armi- 


McElwee  v.  Blackwell,  15  id.  658 
Wright  V.  Simpson,  15  id.  968 
Yale  Cigar  Mfg.  Co.  v.  Yale,  30  id 
1183. 


APPENDIX   B. 

LABEL  ACT  OF  JUNE  18,  1874. 

(18  Statutes  at  Large,  78.) 

An  act  to  amend  the  law  relating  to  patents,  trademarks 
and  copyrights. 

Section  3.  That  in  the  construction  of  this  act  the 
words  ''engraving,"  "cut"  and  "print"  shall  be  applied 
only  to  pictorial  illustrations  or  works  connected  with 
the  fine  arts,  and  no  prints  or  labels  designed  to  be  used 
for  any  other  articles  of  manufacture  shall  be  entered 
under  the  copyright  law,  but  may  be  registered  in  the 
Patent  Oflfice.  And  the  commissioner  of  patents  is  hereby 
charged  with  the  supervision  and  control  of  the  entry  or 
registry  of  such  prints  or  labels,  in  conformity  with  the 
regulations  provided  by  law  as  to  copyright  of  prints, 
except  that  there  shall  be  paid  for  recording  the  title  of 
any  print  or  label  not  a  trademark,  six  dollars,  which 
shall  cover  the  expense  of  furnishing  a  copy  of  the  record 
under  the  seal  of  the  commissioner  of  patents,  to  the 
party  entering  the  same.^ 

1 — This  law    can    be    sustained  and   no    possible    influence    upon 

only  under  the  constitutional  del-  science  or   the   useful   arts."     Mr. 

egation  of  authority  to  congress  to  Justice  Field  in  Higgins  v.  KeufEel, 

legislate  upon  copyrights.  140  U.  S.  428. 

The  provision  quoted  has  refer-  No  action   at   law   or   in   equity 

cnce  only  to  such  writings  as  are  can     be     maintained    for    the    in- 

the  result  of  intellectual  labor  and  fringement  of  a  label  so  registered 

are  founded  in  the  creative  powers  (copyrighted)  unless  the  provision 

of  the  mind.  of  the  copyright  law  in  regard  to 

"It  does  not  have  any  reference  the  notice  has  been  complied  with, 
to  labels  which  simply  designate  or  i.  e.,  "by  inscribing  upon  some  vis- 
describe  the  articles  to  which  they  ible  portion  thereof,  or  of  the  sub- 
are  attached,  and  which  have  no  stance  on  which  the  same  shall  be 
value  separated  from  the  articles,  mounted,     the     following     words, 

424 


LABEL  ACT  OF  JUNE  18,  1874. 


425 


viz.:  'Entered  according  to  Act  of 

Congress,   in   the   year  ,  by 

A.  B.,  in  ttie  office  of  the  Librarian 
of  Congress,  at  Washington;'  or 
(at  the  option  of  the  registrant) 
the  word  'Copyright,'  together  with 
the  year  the  copyright  was  entered, 
and  the  name  of  the  party  by 
whom   it   was    taken   out;"     thus, 

"Copyright.  18 ,  by  A.  B."    Hig- 

glns  V.  Keuffel,   140   U.  S.  428. 

It  is  manifest  that  under  this  de- 
cision the  act  affords  no  protection 
to  labels,  and  registration  under  it 
is  idle.  Luby,  Patent  Office  Prac- 
tice, p.  121.  But  until  there  is  a 
decision  declaring  the  law  uncon- 
stitutional the  Patent  Office  is  open 
for  this  class  of  registration.  Ex 
parte  H.  J.  Heinz  Co.,  62  Off.  Gaz. 
1064.  It  is  held,  however,  that  a 
label  will  not  be  admitted  to  reg- 
istry unless  it  has  the  same  degree 
of  artistic  excellence  as  would  en- 
title It  to  copyright  in  the  office  of 
the  Librarian  of  Congress.  Ex 
parte  Palmer,  58  Off.  Gaz.  383.  And 
labels  containing  or  consisting  of 
matter  constituting  trademarks 
will  not  be  registered  until  such 
trademark  matter  has  been  regis- 
tered as  trademark.  Ex  parte  Dia- 
mond Laboratory  Co.,  44  MSS.  Dec. 
19;  Ex  parte  Ruckstuhl,  56  Off. 
Gaz.  927.  A  label  bearing  the 
name  and  address  of  the  owner, 
the  name  of  the  article  to  which 
it  is  applied,  with  the  price  and 
directions  for  use,  exhibiting  no 
attempt  at  artistic  or  literary 
merit,  will  not  be  registered.  Ex 
parte  Eldredge  Co.,  55  Off.  Gaz. 
1278.  The  same  ruling  has  been 
made  as  to  a  label  purely  descript- 
ive of  the  articles  to  which  it  is 
intended  to  be  applied.  Ex  parte 
C.  G.  Hainline  &  Co.,  58  Off.  Gaz. 
947. 


Prints  and  labels  defined. — "Reg- 
istered labels  or  prints  and  trade- 
marks are  recognized  by  the  terms 
of  the  law  and  decisions  of  the 
courts  as  applicable  only  to  some 
kind  of  merchandise:  labels,  as 
giving  the  names  of  the  manufac- 
turers, place  of  manufacture,  na- 
ture or  quality  of  goods,  directions 
for  use.  and  the  like."  Doolittle, 
Assistant  Commissioner,  in  Ex 
parte   Parker,    13    Off.   Gaz.    323. 

Long  prior  to  the  decision  of 
Higgins  V.  Keuffel,  140  U.  S.  428 
(supra).  Judge  Blatchford  had 
held  that  this  section  was  purely 
a  copyright  act,  and  that  under 
the  general  copyright  regulation 
of  congress  (sec.  4956,  R.  S.)  no 
person  could  claim  protection  for 
a  label  so  registered  unless  "be- 
fore publication"  he  had  deposited 
a  printed  copy  of  the  title  of  the 
article  in  respect  of  which  the 
copyright  was  claimed,  in  the  Pat- 
ent Office.  Marsh  v.  Warren,  14 
Blatchf.  263;  14  Off.  Gaz.  678;  Fed. 
Cas.  No.  9121;    16  Fed.  Cas.  821. 

It  has  been  held  that  the  mere 
fact  that  words  or  designs  which 
appear  upon  the  label  might  be 
used  as  trademarks  does  not  pre- 
vent registration  under  this  act. 
Ex  parte  Orcutt  &  Son,  8  Off.  Gaz. 
276;  and  in  another  early  case  the 
applicant's  label  was  admitted  to 
registry,  but  certain  "arbitrary 
words"  and  "fanciful  figures"  were 
first  refused  or  stricken  out  of  the 
label,  and  the  commissioner  sug- 
gested that  they  should  be  regis- 
tered as  trademarks.  Ex  parte  W. 
Simpson  &  Sons.  10  Off.  Gaz.  334. 
But  as  indicated  in  the  first  por- 
tion of  this  note,  the  prevailing 
doctrine  was  that  "the  presence  in 
a  label  of  matter  registrable  as  a 
trademark     excludes      the     whole 


426 


APPENDIX  B. 


from  registration."  Ex  parte  Thad- 
deus  Davids  &  Co..  16  Off.  Gaz. 
94.  It  has  been  held  by  the  su- 
preme court  of  the  District  of  Co- 
lumbia, however,  that  the  commis- 
sioner of  patents  has  no  discre- 
tion to  determine  whether  a  par- 
ticular label  should  be  classed  as 
a  trademark  or  as  only  a  label. 
That  his  duties  as  respects  this 
act  are  purely  ministerial,  and 
mandamus  will  lie  to  compel  him 
to  register  any  label  properly  pre- 
sented for  registration.  United 
States  ex  rel.  Wilcox  &  Gibbs  Sew- 
ing Machine  Co.  v.  Marble,  1 
Mackey,  284;  22  Off.  Gaz.  1366; 
United  States  ex  rel.  Schumacher 
V.  Marble,  3  Mackey,  32.  And  it 
is  now  settled  that  a  print  will  not 
be  refused  registration  "even 
though  it  may  contain  matter  ca- 
pable of  sequestration  as  a  trade- 
mark, not  in  fact  registered  as  a 
trademark."  Greeley,  Commis- 
sioner, in  Ex  parte  United  States 
Playing  Card  Co.,  82  Off.  Gaz.  1209, 
1210. 

In  regard  to  this  act,  the  Pat- 
ent Office  has  adopted  the  follow- 
ing rule:  "These  sections  of  stat- 
utes (referring  to  sections  3,  4  and 
5  of  the  act  of  June  18,  1874)  are 
construed  as  authorizing  the  reg- 
istry of  'prints'  and  'labels.'  A 
label  is  a  device  or  representation 
not  borne  by  an  article  of  manu- 
facture or  vendible  commodity.  A 
print  is  a  device  or  representation 
not  borne  by  an  article  of  mianu- 
facture  or  vendible  commodity,  but 
in  some  fashion  pertaining  there- 
to— such,  for  instance,  as  a  pic- 
torial advertisement  thereof.  A 
label  cannot  be  registered  if  it 
hear  a  device  capable  of  registra- 
tion as  a  trademark,  until  after 
such    device     is     registered    as    a 


trademark.  Both  labels  and  prints, 
in  order  to  be  entitled  to  registry, 
must  be  intellectual  productions  in 
the  degree  required  by  the  copy- 
right law." 

The  restriction  contained  in  this 
rule  as  to  the  registration  of  la- 
bels containing  a  device  capable 
of  sequestration  as  a  trademark 
does  not  apply  to  a  print  contain- 
ing such  a  device,  and  it  will  be 
admitted  to  registration,  even 
though  it  may  contain  a  device  so 
capable  of  sequestration  as  a  trade- 
mark, and  that  device  has  not  been 
registered.  Ex  parte  United  States 
Playing  Card  Co..  82  Off.  Gaz.  1209. 
The  Patent  Office  has  furnished 
the  following  information  to  appli- 
cants for  the  registration  of  prints 
and  labels  under  this  act,  and 
forms  for  use  in  making  applica- 
tion for  such  registration: 

"The  so-called  print  and  label 
section  of  the  copyright  statute, 
approved  June  18,  1874,  is  con- 
strued to  provide  for  the  registra- 
tion of  any  print  or  label  without 
examination  as  to  its  novelty. 

"An  adverse  decision  by  the  ex- 
aminer who  has  charge  of  the  reg- 
istration of  prints  and  labels,  upon 
an  applicant's  right  to  have  a 
print  or  label  registered,  will  be 
reviewed  by  the  commissioner  in 
person,  on  petition,  without  fee. 

"The  word  'print,'  as  used  in 
this  act,  so  far  as  it  relates  to  reg- 
istration in  the  Patent  Office,  is  de- 
fined as  an  artistic  representation 
or  intellectual  production  not 
borne  by  an  article  of  manufac- 
ture or  vendible  commodity,  but  in 
some  fashion  pertaining  thereto — 
such,  for  instance,  as  an  advertise- 
ment thereof. 

"The  word  'label,'  as  used  in  this 
act,  so  far  as  it  relates  to  registra- 


LABEL  ACT  OP  JUNE  18,  1874. 


427 


tion  in  the  Patent  Office,  Is  de- 
fined as  an  artistic  representation 
or  intellectual  production  im- 
pressed or  stamped  directly  upon 
the  articles  of  manufacture,  or  upon 
a  slip  or  piece  of  ppper  or  other  ma- 
terial, to  be  attached  In  any  man- 
ner to  manufactured  articles,  or 
to  bottles,  boxes,  and  packages 
containing  them,  to  indicate  the 
contents  of  the  package,  the  name 
of  the  manufacturer,  or  the  place 
of  manufacture,  the  quality  of 
goods,  directions  for  use,  etc. 

"By  the  words  'articles  of  man- 
ufacture' (to  which  such  print  or 
label  is  applicable  by  this  act)  is 
meant  all  vendible  commodities 
produced  by  hand,  machinery,  or 
art. 

"No  print  or  label  can  be  regis- 
tered unless  it  properly  belongs  to 
an  article  of  commerce  and  is  as 
above  defined. 

"To  entitle  the  proprietor  of  any 
such  print  or  label  to  register  the 
same  in  the  Patent  Office,  the  ap- 
plication for  the  registration  there- 
of must  be  made  to  the  commis- 
sioner of  patents,  and  said  appli- 
cation should  be  signed  by  the 
proprietor  or  his  agent.  There 
must  also  be  filed  in  the  Patent 
Office  five  copies  of  the  print  or 
label  one  of  which,  when  the  print 
or  label  is  registered,  shall  be  cer- 
tified under  the  seal  of  the  commis- 


sioner of  patents  and  returned  to 
the  proprietor. 

"The  certificate  of  such  registra- 
tion will  continue  in  force  for 
twenty-eight  years. 

"The  certificate  may  be  contin- 
ued for  a  further  term  of  fourteen 
years  upon  filing  a  second  appli- 
cation within  six  months  before 
the  expiration  of  the  term  of  the 
original  certificate,  and  complying 
with  all  other  regulations  with  re- 
gard to  original  applications. 
Within  two  months  from  the  date 
of  said  renewal,  the  applicant 
must  cause  a  copy  of  the  record 
thereof  to  be  published  for  four 
weeks  in  one  or  more  newspapers 
printed  in  the  United  States. 

"The  fee  for  registration  of  a 
print  or  label  is  $6,  to  be  paid  in 
the  same  manner  as  fees  for  trade- 
marks. 

"The  attention  of  persons  con- 
templating the  registry  of  a  print 
or  label  in  the  Patent  Office  is 
called  to  the  decision  of  the  United 
States  supreme  court  in  Higgins  v. 
Keuffel,  55  0.  G.  1139;  140  U.  S. 
428;  to  the  decision  of  the  United 
States  circuit  court  in  Marsh  et  al. 
V.  Warren  et  al,  14  0.  G.  678,  and 
to  the  decisions  of  the  commis- 
sioner of  patents  in  E.r  parte 
United  States  Playing  Card  Co..  82 
O.  G.  1209,  and  Ex  parte  Mahn,  82 
O.  G.  1210." 


RULES    GOVERNING    THE    REGISTRATION    OF 

PRINTS  AND  LABELS    IN  THE 

PATENT  OFFICE. 

United  States  Patent  Office, 

Washington,  D.  C,  July  1  1902. 
The  following  rules,  designed  to  be  in  strict  accordance 
with  the  provisions  of  the  copyright  law,  for  the  registra- 
tion of  prints  and  labels,  are  published  for  gratuitous 
distribution. 

Applicants  for  registration  and  their  attorneys  are  ad- 
vised that  their  business  will  be  facilitated  by  the  observ- 
ance of  the  forms  on  pages  438-441. 

F.  I.  Allen, 
Commissioner  of  Patents. 

CORKESPONDEN  CE . 

1.  All  business  with  the  office  should  be  transacted  in 
writing.  Unless  by  the  consent  of  all  parties,  the  action 
of  the  office  will  be  based  exclusively  on  the  written 
record.  No  attention  will  be  paid  to  any  alleged  oral 
promise,  stipulation,  or  understanding  in  relation  to 
which  there  is  disagreement  or  doubt. 

2.  Applicants  and  attorneys  will  be  required  to  con- 
duct their  business  with  the  office  with  decorum  and  cour- 
tesy. Papers  presented  in  violation  of  this  requirement 
will  be  returned.  But  all  such  papers  will  first  be  sub- 
mitted to  the  Commissioner,  and  only  returned  by  his 
direct  order. 

3.  All  letters  should  be  addressed  to  "The  Commis- 
sioner of  Patents";  and  all  remittances  by  postal  order, 
check,  or  draft  should  be  to  his  order. 

4.  A  separate  letter  should  in  every  case  be  written  in 
relation  to  each  distinct  subject  of  inquiry  or  application. 

428 


LABEL  ACT  OP  JUNE  18,  1874.  429 

Complaints  against  the  examiner,  assignments  for  record, 
fees,  and  orders  for  copies  or  abstracts  must  be  sent  to 
the  office  in  separate  letters. 

5.  Letters  relating  to  pending  applications  should  re- 
fer to  the  name  of  the  applicant  and  date  of  filing.  Let- 
ters relating  to  registered  prints  and  labels  should  refer 
to  the  name  of  registrant  and  immber  and  date  of  cer- 
tificate. 

6.  The  personal  attendance  of  applicants  at  the  Patent 
Office  is  unnecessar}\  Their  business  can  ]>e  transacted 
by  correspondence. 

7.  When  an  attorney  shall  have  filed  his  power  of  at- 
torney, duly  executed,  the  correspondence  will  be  held 
with  him. 

8.  A  double  correspondence  with  an  applicant  and  his 
attorney,  or  with  two  attorneys,  can  not  generally  be  al- 
lowed. 

9.  The  office  can  not  undertake  to  respond  to  inquiries 
propounded  with  a  view  to  ascertain  whether  certain 
prints  and  labels  have  been  registered,  or,  if  so  to  whom, 
or  for  what  goods ;  nor  can  it  give  advice  as  to  the  nature 
and  extent  of  the  protection  afforded  by  the  law,  or  act 
as  its  expounder,  except  as  questions  may  arise  upon  ap- 
plications regularly  filed. 

10.  Express  charges,  freight,  postage,  and  all  other 
charges  on  matter  sent  to  the  Patent  Office  must  be  pre- 
paid in  full ;  otherwise  it  will  not  be  received. 

ATTORNEYS. 

11.  An  applicant  may  prosecute  his  own  case,  but  he  is 
advised,  unless  familiar  with  such  matters,  to  employ  a 
competent  attorney.  The  office  can  not  aid  in  the  selec- 
tion of  any  attorney.  An  applicant  may  be  represented 
by  any  person  who  is  registered  under  the  provisions  of 
Rule  17  of  the  Eules  of  Practice  of  tlie  Patent  Office  to 
prosecute  applications  for  patents. 

12.  Before  any  attorney,  original  or  associate,  will  be 


430  ■  ^^PPENDIX  B. 

allowed  to  inspect  papers  or  take  action  of  any  kind,  liis 
power  of  attorney  must  be  filed.  But  general  powers 
given  by  a  principal  to  an  associate  can  not  be  considered. 
In  each  application  the  written  authorization  must  be 
filed.  A  power  of  attorney  purporting  to  have  been  given 
to  a  firm  or  copartnership  will  not  be  recognized,  either  in 
favor  of  the  firm  or  of  any  of  its  members,  unless  all  its 
members  shall  be  named  in  such  power  of  attorney. 

13.  Substitution  or  association  can  be  made  by  an  at- 
torney upon  the  written  authorization  of  his  principal; 
but  such  authorization  will  not  empower  the  second  at- 
torney to  appoint  a  third. 

14.  Powers  of  attorney  may  be  revoked  at  any  stage 
in  the  proceedings  of  a  case  upon  application  to  and  ap- 
proval by  the  Commissioner;  and  when  so  revoked  the 
oSice  will  communicate  directly  with  the  applicant,  or 
such  other  attorney  as  he  may  appoint.  An  attorney  will 
be  promptly  notified  by  the  docket  clerk  of  the  revocation 
of  his  power  of  attorney. 

15.  For  gross  misconduct  the  Commissioner  may  re- 
fuse to  recognize  any  person  as  an  attorney  either  gen- 
erally or  in  any  particular  case ;  but  the  reasons  for  such 
refusal  will  be  duly  recorded  and  be  subject  to  the  ap- 
proval of  the  Secretary  of  the  Interior. 

WHO    MAY   EEGISTER    A   PRINT    OR   LABEL. 

16.  The  author  of  any  print  or  label,  who  is  a  citizen 
or  resident  of  the  United  States,  or  who  is  a  subject  or 
citizen  of  any  country  to  whose  subjects  or  citizens  the 
United  States  has  extended  the  benefits  of  copyright,  is 
privileged  to  obtain  registration  in  the  United  States. 

Any  person  to  whom  an  author  who  has  the  privilege  of 
copyright  in  the  United  States  has  transferred  his  copy- 
right can  apply  for  and  obtain  a  copyright  entry  as  a 
proprietor. 

17.  By  the  act  of  March  3,  1891,  which  went  into  effect 
on  July  1  of  the  same  year,  the  United  States  Congress, 


LABEL  ACT  OP  JUNE  18,  1874.  431 

by  amendment  of  tlie  then  existing  copyright  law,  re- 
moved the  limitation  of  the  i)rivilege  of  copyright  to 
citizens  of  the  United  States  and  made  it  possible  for 
foreign  authors  to  obtain  copyright  in  the  United  States 
upon  the  same  terms  as  native  authors.  The  last  section 
of  this  statute  limits  its  application  as  follows: 

That  this  act  shall  only  apply  to  a  citizen  or  subject  of  a  foreign 
state  or  nation  when  such  foreign  state  or  nation  permits  to  citizens  of 
the  United  States  of  America  the  benefit  of  copyright  on  substantially 
the  same  basis  as  (to)  its  own  citizens,  and  when  such  foreign  state  or 
nation  is  a  party  to  an  international  agreement  which  provides  for 
reciprocity  in  the  granting  of  copyright,  by  the  terms  of  which  agree- 
ment the  United  States  of  America  may  at  its  pleasure  become  a  party 
to  such  agreement.  The  existence  of  either  of  the  conditions  aforesaid 
shall  be  determined  by  the  President  of  the  United  States  by  procla- 
mation made  from  time  to  time  as  the  purposes  of  this  act  may  require. 

Under  the  operation  of  this  provision,  the  privileges 
of  copyright  in  the  United  States  have  been  extended  by 
Presidential  proclamations  to  the  authors  of  Belgium, 
Chile,  Costa  Kica,  Denmark,  France,  Germany,  Great 
Britain  and  her  possessions  (Australia,  Canada,  India, 
etc.),  Italy,  Mexico,  Netherlands  (Holland)  and  posses- 
sions, Portugal,  Spain,  and  Switzerland. 

The  authors  of  the  countries  named,  therefore,  and 
their  assigns,  as  copyright  proprietors,  can  obtain  copy- 
right protection  for  their  prints  and  labels  in  the  United 
States  upon  the  same  conditions  as  American  authors. 

Under  the  authority  of  the  opinions  of  the  Attorney- 
General  dated  December  2,  1898,  and  February  19,  1902, 
residents  of  Cuba,  Hawaii,  and  Porto  Rico  are  entitled  to 
the  benefits  of  the  copyright  laws  relating  to  the  registra- 
tion of  prints  and  labels. 

THE  APPLICATION. 

18.  To  entitle  the  author  or  proprietor  of  any  such 
print  or  label  to  register  the  same  in  the  Patent  Office,  the 
application  for  registration  thereof  must  be  made  to  the 
Commissioner  of  Patents,  and  the  said  application  should 


432  APPENDIX  B. 

be  signed  by  the  author  or  proprietor,  or  for  the  author 
or  proprietor  by  a  duly  authorized  agent. 

19.  A  complete  application  comprises— 

(a)  A  statement  addressed  to  the  Commissioner  of 
Patents,  disclosing  applicant's  name,  nationality,  and 
place  of  doing  business;  whether  author  or  proprietor, 
and,  if  proprietor,  a  disclosure  of  the  nationality  of  the 
author;  the  title  of  the  print  or  label,  and  the  name  of 
the  article  of  manufacture  for  which  the  print  or  label 
is  to  be  used. 

{b)  Ten  copies  of  the  print  or  label,  one  of  which, 
when  the  print  or  label  is  registered,  shall  be  certified 
under  the  seal  of  the  Commissioner  of  Patents  and  re- 
turned to  the  author  or  proprietor. 

(c)  A  statement  of  its  nonpublication  prior  to  date  of 
filing. 

(d)  A  fee  of  $6. 

20.  Tlie  title  of  the  print  or  label  must  appear  on  the 
copies  filed. 

21.  The  deposit  of  the  10  copies  required  should  be 
made  before  the  publication  of  the  print  or  label,  the  law 
providing  that  no  person  shall  be  entitled  to  a  copyright 
unless  he  shall  also  not  later  than  the  date  of  publication 
thereof,  in  this  or  any  foreign  country,  deliver  the  re- 
quired copies  of  the  i^rint  or  label  in  the  office  of  registry. 

22.  Pending  applications  are  preserved  in  secrecy,  and 
no  infonnation  will  be  given  without  authority  of  the 
applicant  respecting  the  filing  of  an  application  for  the 
registration  of  a  print  or  label  by  any  person,  or  the  sub- 
ject-matter thereof,  unless  it  shall,  in  the  opinion  of  the 
Commissioner,  be  necessary  to  the  proper  conduct  of 
business  before  the  office. 

EXAMINATION  OF  APPLICATIONS. 

23.  The  so-called  print  and  label  section  of  the  copy- 
right statute,  approved  June  18,  1874,  is  construed  to 
provide  for  the  registration  of  any  print  or  label  without 
examination  as  to  it-^  novelty. 


LABEL  ACT  OF  JUNE  18,  1874.  433 

24.  All  applications  for  registration  are  considered 
in  the  first  instance  by  tlie  examiner.  AVlienever  on  ex- 
amination of  an  application  registration  is  refused  for 
any  reason  whatever  the  applicant  will  be  notified  there- 
of. The  reasons  for  such  rejection  will  be  stated,  and 
such  information  will  be  given  as  may  be  useful  in  aiding 
the  applicant  to  judge  of  the  propriety  of  further  prose- 
cuting his  apijlication. 

25.  The  examination  of  an  application  and  the  action 
thereon  will  be  directed  throughout  to  the  merits,  but  in 
each  letter  the  examiner  shall  state  or  refer  to  all  his  ob- 
jections. 

AMENDMENTS. 

26.  The  ai)plication  may  be  amended  to  correct  infor- 
malities or  to  avoid  objections  made  by  the  office,  or  for 
other  reasons  arising  in  the  course  of  examination,  and  if 
the  copies  of  the  prints  or  labels  furnished  are  for  any 
reason  not  registrable  under  the  copyi-ight  law,  the  appli- 
cant may  substitute  copies  which  confonu  to  the  require- 
ments of  said  law. 

27.  In  every  amendment  the  exact  word  or  words  to  be 
stricken  out  or  inserted  nmst  be  specified,  and  the  precise 
point  indicated  where  the  erasure  or  insertion  is  to  be 
made.  All  such  amendments  must  be  on  sheets  of  paper 
separate  from  the  papers  previously  filed,  and  written  on 
but  one  side  of  the  paper. 

28.  After  allowance,  the  examiner  will  exercise  juris- 
diction over  an  application  only  by  special  authority 
from  the  Commissioner. 

Amendments  may  be  made  after  the  allowance  of  an 
application  on  the  recommendation  of  the  examiner,  ap- 
l)roved  by  the  Commissioner,  without  withdrawing  the 
case  from  issue. 

29.  After  the  completion  of  the  ai)plication,  the  office 
will  not  return  the  papers  for  any  jrarpose  whatever.  If 
the  applicant  has  not  preserved  copies    of    the    papers 

28 


434  APPENDIX  B. 

wliicli  lie  wishes  to  amend,  the  office  will  furnish  them  on 
the  usual  temis.     (See  Rule  42.) 

SUBJECT-MATTER  OF  APPLICATION 

30.  The  word  "print,"  as  used  in  section  3  of  the 
copyright  act,  so  far  as  it  relates  to  registration  in  the 
Patent  Office,  is  defined  as  an  artistic  and  intellectual  pro- 
duction designed  to  be  used  for  an  article  of  manufacture, 
and  in  some  fashion  pertaining  thereto  but  not  borne  by 
it;  such,  for  instance,  as  an  advertisement  thereof. 

31.  The  word  "label,"  as  used  in  this  act,  so  far  as  it 
relates  to  registration  in  the  Patent  Office,  is  defined  as 
an  artistic  and  intellectual  production  impressed  or 
stamped  directly  upon  the  article  of  manufacture,  or 
upon  a  slip  or  piece  of  paper  or  other  material,  to  be  at- 
tached in  any  manner  to  manufactured  articles,  or  to 
bottles,  boxes,  and  packages  containing  them,  to  indicate 
the  article  of  manufacture. 

32.  No  print  or  label  can  be  registered  unless  it  prop- 
erly belongs  to  an  article  of  manufacture,  and  is  descrip- 
tive thereof,  and  is  as  above  defined,  and  unless  the  ap- 
plication is  filed  before  publication  thereof. 

APPEALS. 

33.  An  adverse  decision  by  the  examiner  who  has 
charge  of  the  registration  of  prints  and  labels,  upon  an 
applicant's  right  to  have  a  print  or  label  registered,  will 
be  reviewed  by  the  Commissioner  in  person,  on  appeal, 
without  fee. 

ISSUE,   DATE,   AND  DURATION  OF   CERTIFICATE. 

34.  Wien  the  requirements  of  the  law  and  of  the  rules 
have  been  complied  with,  and  the  office  has  adjudged  a 
print  or  label  registrable,  a  certificate  will  be  issued  by 
the  Commissioner  under  his  seal,  to  the  effect  that  the 
applicant  has  complied  with  the  law,  and  that  he  is  en- 
titled to  the  protection  of  his  print  or  label  in  such  case 


LABEL  ACT  OF  JUNE  18,  1874.  435 

made  and  provided.    Attached  to  the  certificate  will  ]>e  a 
copy  of  the  jn-int  or  label. 

35.  The  weekly  issue  closes  on  Thursday,  and  the  cer- 
tificates of  registration  of  that  issue  bear  date  as  of  the 
third  Tuesday  thereafter. 

36.  A  certificate  of  registry  shall  remain  in  force  for 
twenty-eight  years  from  its  date. 

37.  The  certificate  may  be  continued  for  a  further 
term  of  fourteen  years  upon  filing  a  second  application 
within  six  months  before  the  exijiration  of  the  term  of 
the  original  certificate  and  complying  with  all  other  regu- 
lations with  regard  to  original  applications.  Within  two 
months  from  the  date  of  said  renewal  the  applicant  must 
cause  a  coi)y  of  the  record  thereof  to  be  published  for 
four  weeks  in  one  or  more  newspapers  printed  in  the 
United  States. 

ASSIGNMENTS. 

38.  Prints  and  labels  are  assignable  in  law  by  an  in- 
strument in  writing.  This  should  state  the  names  of  the 
assignee  and  assignor,  the  title  of  the  print  or  label  as- 
signed ;  the  date  of  filing  the  application,  or,  if  registered, 
the  date  and  number  of  the  certificate,  a  statement  of  a 
** valuable  consideration,"  and  should  be  dated  and 
signed. 

Every  assignment  must  be  recorded  in  the  Patent  Office 
within  sixty  days  after  its  execution,  in  default  of  which 
it  shall  be  void  as  against  any  subsequent  purchaser  or 
mortgagee, .  for  a  valuable  consideration,  without  notice. 

COPIES    AND   PUBLICATIONS. 

39.  After  a  print  or  label  has  been  registered,  copies 
thereof  can  be  furnished,  when  authorized  by  the  Com- 
missioner, upon  the  payment  of  the  fee. 

40.  An  order  for  a  copy  of  an  assignment  must  give 
the  liber  and  page  of  the  record,  as  well  as  the  name  of 
the  proprietor;  otherwise  an  extra  charge  will  be  made 


436  APPENDIX  B. 

for  the  time  consumed  in  making  the  search  for  such  as- 
signment. 

•il.  The  Official  Gazette  of  the  Patent  Office  will  con- 
tain a  list  of  all  the  prints  and  labels  registered,  with  the 
name  and  address  of  the  registrant  in  each  case,  the  title 
of  the  print  or  label,  and  a  statement  of  the  particular 
goods  to  which  it  is  to  be  applied,  together  with  the  date 
of  filing  the  application. 

FEES. 

42.  On  filing  an  application  for  registration  of  a  print  or  label..  $6.00 
For  manuscript  copies  for  every  100  words  or  fraction  thereof..  .10 
For  recording  every  assignment,  agreement,  power  of  attorney, 

or  other  paper  of  300  words  or  less 1.00 

For  recording  every  assignment,  agreement,  power  of  attorney, 
or  other  paper  of  more  than  300  words  and  less   than  1,000 

words 2.00 

For  recording  every  assignment,  agreement,  power  of  attorney, 

or  other  paper  of  more  than  1,000  words 3.00 

For  abstracts  of  title: 

For  the  certificate  of  search 1.00 

For  each  brief  from  the  digests  of  assignments 20 

For  assistance  to  attorneys   and   others   in   the   examination   of 

records,  one  hour  or  less 50 

Each  additional  hour  or  fraction  thereof 50 

For  single  printed  copy,  when  authorized  by  the  Commissioner.       .05 

If  certified,  for  the  grant 50 

For   the   certificate 25 

43.  The  fee  for  registration  of  a  print  or  label  is  to  be 
paid  to  the  Commissioner  of  Patents,  or  to  the  Treasurer 
or  any  of  the  assistant  treasurers  of  the  United  States, 
or  to  any  of  the  depositaries,  national  banks,  or  receivers 
of  public  money  designated  by  the  Secretary  of  the 
Treasury  for  that  purpose,  who  shall  give  the  depositor 
a  receipt  or  certificate  of  deposit  therefor,  which  shall  be 
transmitted  to  the  Patent  Office.  When  this  can  not  be 
done  without  inconvenience,  the  money  may  be  remitted 
by  mail,  and  in  everj^  such  case  the  letter  should  state  the 
exact  amount  inclosed.  All  money  orders  and  checks 
should  be  made  payable  to  the  ''Commissioner  of 
Patents." 


LABEL  ACT  OF  JUNE  18,  1874.  437 

44.  All  money  sent  by  mail,  either  to  or  from  the 
Patent  Office,  will  be  at  the  risk  of  the  sender.  All  pay- 
ments to  the  office  must  be  made  in  specie,  Treasury 
notes,  national-bank  notes,  certified  checks,  or  money 
orders. 

REPAYMENT  OF  MONEY. 

45.  Upon  refusal  of  the  Commissioner  to  register  the 
print  or  label,  and  on  ajjplication  by  the  applicant,  or  his 
duly  authorized  agent,  the  fee  may  be  returned. 

NOTICE  OF   COPYRIGHT. 

46.  It  is  necessary,  in  order  to  maintain  an  action  for 
infringement  of  a  copyright,  that  the  claim  of  copyright 
be  printed  on  each  copy  of  the  article  protected.  The 
wording  of  the  notice  is  detennined  by  the  copyright 
statute,  section  4962,  and  should  be  as  follows:  Copy- 
right, 19—,  by  (inserting  full  name  of  author  or  proprie- 
tor). 


FOEMS  OF  APPLICATION  FOR  REGISTRATION 

OF  PRINTS. 

(1)   FOR  AN  INDIVIDUAL. 

To  the  Commissioner  of  Patents: 

The  undersigned,  A.  B.,  a  citizen  (or  subject,  as  the  case  may  be) 

of  the ,  residing  at , ,  and  doing  business  at 

No. street,  in  said  city,  hereby  applies  as  author 

(or  proprietor,  as  the  case  may  be)  (if  the  application  is  made  by  the 
proprietor,  the  nationality  of  the  author  from  whom  title  is  derived 
should  be  stated)  for  registration  of  the  print  shown  in  the  accom- 
panying copies,  ten  of  which  are  furnished. 

The  print  has  not  been  published;    its  title  is ,  and  it  is  used 

for  advertising  purposes  for  . 

A.  B., 
Author  or  Proprietor. 
Dated  this  day  of  ,  190—. 


(2)   FOR  A  FIRM. 

To  the  Commissioner  of  Patents: 

The  undersigned,  C.  D.  &  Co.,  a  firm  domiciled  in  the  city  of , 

county  of  ,   State   of  ,   and   doing  business   at  No.   

street,  in  said  city,  and  composed  of  the  following  mem- 

Ijers .  citizens  of  (or  subjects,  as  the  case  may  be)  

^  hereby  apply  as  author    (or  proprietor,  as  the  case  may  be) 

(if  the  application  is  made  by  the  proprietor,  the  nationality  of  the 
author  from  whom  title  is  derived  should  be  stated)  for  registration 
of  the  print  shown  in  the  accompanying  copies,  ten  of  which  are 
furnished. 

The  print  has  not  been  published;    its  title  is ,  and  it  is  used 

for  advertising  purposes  for  . 

C.  D.  &  Co., 
Author  or  Proprietor, 
By  C.  D.,  a  member  of  the  firm. 

Dated  this day  of — ,  190—. 


(3)   FOR  A  CORPORATION. 

To  the  Commissioner  of  Patents: 

The  applicant.  The  E.  &  F.  Company,  a  corporation  duly  created  by 

authority  of  the  laws  of  the  State  of (or  other  authority,  as  the 

438 


LABEL  ACT  OF  JUNE  18.  1874.  439 

case  may  be),  located  in  the  city  of  ,  county  of  ,  in  said 

State,  and  doing  business  at  No. street,  in  said  city. 

hereby  applies  as  proprietor  (the  nationality  of  the  author  from  whom 
title  is  derived  should  be  stated)  for  registration  of  the  print  shown  in 
the  accompanying  copies,  ten  of  which  are  furnished. 

The  print  has  not  been  published;    its  title  is ,  and  it  is  used 

for  advertising  purposes  for  . 

The  E.  &  F.  Company, 
By  G.  H.,  the  President  {or  other  officer.) 

Dated  this day  of ,  190—. 


FORMS  OF  APPLICATION  FOR  REGISTRATION 

OF  LABELS. 

(1)   FOR  AN  INDIVIDUAL. 

To  the  Commissioner  of  Patents: 

The  undersigned,  A.  B.,  a  citizen   (or  subject,  as  the  case  may  be), 

of  the ,  residing  at  ,  ,  and   doing  business 

at  No. street,  in  said  city,  hereby  applies  as  author 

(or  proprietor,  as  the  case  may  be)  (if  the  application  is  made  by  the 
proprietor,  the  nationality  of  the  author  from  whom  title  is  derived 
should  be  stated)  for  registration  of  the  label  shown  in  the  accom- 
panying copies,  ten  of  which  are  furnished. 

The  label  has  not  been  published;    its  title  is  ,  and  it  is  to  be 

used  on  . 

A.  B.,  Author  or  Proprietor. 

Dated  this day  of ,  190—. 


(2)    FOR  A  FIRM. 

To  the  Commissioner  of  Patents: 

The  undersigned,  C.  D.  &  Co.,  a  firm  domiciled  in  the  city  of , 

county  of  ,    State   of  ,   and   doing   business   at   No.   

street,  in  said  city,  and  composed  of  the  following  mem- 
bers,   ,  citizens  of  (or  subjects,  as  the  case  may  be)  

,  hereby  apply,  as  author   (or  proprietor,  as  the  case  may  be,  if 

the  application  is  made  by  the  proprietor,  the  nationality  of  the  author 
from  whom  title  is  derived  should  be  stated),  for  registration  of  the 
label  shown  in  the  accompanying  copies,  ten  of  which  are  furnished. 

The  label  has  not  been  published;    its  title  is ,  and  it  is  to  be 

used  on . 

C.  D.  &  Co., 
Author  or  proprietor, 
By  C.  D., 
A  member  of  the  firm. 
Dated  this day  of ,  190—. 


I 


(3)   FOR  A  CORPORATION. 

To  the  Commissioner  of  Patents: 

The  applicant.  The  E.  and  F.  Company,  a  corporation  duly  created 

by  authority  of  the  laws  of  the  State  of (or  other  authority,  as 

440 


LABEL  ACT  OF  JUNE  18^  1874,  441 

the  case  may  be),  located  in  the  city  of  ,  county  of  ,  in 

said   State,  and   doing  business  at  No. street,   in 

said  city,  hereby  applies  as  proprietor  (the  nationality  of  the  author 
from  whom  title  is  derived  should  be  stated)  for  registration  of  the 
label  shown  in  the  accompanying  copies,  ten  of  which  are  furnished. 

The  label  has  not  been  published;    its  title  is  ,  and  it  is  to  be 

used  on . 

The  E.  &  F.  Comi-anv, 
By  G.  H., 
The  President  {or  other  officer). 
Dated  this day  of ,  190—. 


APPENDIX  C. 

PENAL  ACT  OF  AUGUST  14,  1876. 

(19  Statutes  at  Large,  141.) 

Be  it  enacted  hy  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assem- 
bled: 

Section  1.  That  every  person  who  shall,  with  intent 
to  defraud,  deal  in  or  sell,  or  keep  or  offer  for  sale,  or 
cause  or  procure  the  sale  of,  any  goods  of  substantially 
the  same  descriptive  properties  as  those  referred  to  in 
the  registration  of  any  trademark  pursuant  to  the  stat- 
utes of  the  United  States,  to  which,  or  to  the  package 
in  which  the  same  are  put  up,  is  fraudulently  affixed  said 
trademark,  or  any  colorable  imitation  thereof,  calculated 
to  deceive  the  public,  knowing  the  same  to  be  counter- 
feit, or  not  the  genuine  goods  referred  to  in  said  regis- 
tration, shall,  on  conviction  thereof,  be  punished  by  a 
fine  not  exceeding  one  thousand  dollars,  or  imprisonment 
not  more  than  two  years,  or  both  such  fine  and  imprison- 
ment. 

Section  2.  That  every  person  who  fraudulently  affixes, 
or  causes  or  i3rocures  to  be  fraudulently  affixed,  any 
trademark  registered  pursuant  to  the  statutes  of  the 
United  States,  or  any  colorable  imitation  thereof,  calcu- 
lated to  deceive  the  public,  to  any  goods  of  substantially 
the  same  descriptive  properties  as  those  referred  to  in 
said  registration,  or  to  the  package  in  which  they  are 
put  up  knowing  the  same  to  be  counterfeit,  or  not  the 
genuine  goods  referred  to  in  said  registration,  shall,  on 
conviction  thereof,  be  punished  as  prescribed  in  the  first 
section  of  this  act. 

Section  3.     That  every  person  who  fraudulently  fills, 

442 


PENiU.  ACT  OF  AUGUST  14,  1876.  443 

or  causes  or  procures  to  be  fraudulently  filled,  any  pack- 
age to  which  is  affixed  any  trade-mark,  registered  pur- 
suant to  the  statutes  of  the  United  States,  or  any  color- 
able imitation  thereof,  calculatcMl  to  deceive  tlie  i)ublic, 
with  any  goods  of  substantially  the  same  descriptive 
properties  as  those  referred  to  in  said  registration  know- 
ing the  same  to  be  counterfeit,  or  not  the  genuine  goods 
referred  to  in  said  registration,  shall,  on  conviction 
thereof,  be  punished  as  prescribed  in  the  first  section  of 
this  act. 

Section  4.  That  any  person  or  persons  who  shall, 
with  intent  to  defraud  any  person  or  persons,  knowingly 
and  wilfully  cast,  engrave,  or  manufacture,  or  have  in 
his,  her,  or  their  })ossession,  or  buy,  sell,  offer  for  sale,  or 
deal  in,  any  die  or  dies,  plate  or  plates,  brand  or  brands, 
engraving  or  engravings,  on  wood,  stone,  metal,  or  other 
substance,  moulds,  or  any  false  representations,  likeness, 
copy,  or  colorable  imitation  of  any  die,  plate,  brand,  en- 
graving or  mold  of  any  private  label,  brand,  stamp, 
wrapper,  engraving  on  paper  or  other  substance  or 
trademark,  registered  pursuant  to  the  statutes  of  the 
United  States,  shall,  upon  conviction  thereof,  be  pun- 
ished as  prescribed  in  the  first  section  of  this  act. 

Section  5.  That  any  person  or  persons  who  shall, 
with  intent  to  defraud  any  person  or  persons,  knowingly 
and  wilfully  make,  forge  or  counterfeit,  or  have  in  his,  her 
or  their  possession,  or  buy,  sell,  offer  for  sale,  or  deal  in, 
any  representation,  likeness,  similitude,  copy,  or  color- 
able imitation  of  any  private  label,  brand,  stamp,  wrap- 
per, engraving,  mold  or  trademark,  registered  pursuant 
to  the  statutes  of  the  United  States,  shall,  upon  convic- 
tion thereof,  be  punished  as  prescribed  in  the  first  sec- 
tion of  this  act. 

Section  6.  That  any  person  who  shall,  with  intent  to 
injure  or  defraud  the  owner  of  any  trademark,  or  any 
other  person  lawfully  entitled  to  use  or  protect  the  same, 
buy,  sell,  offer  for  sale,  deal  in,  or  have  in  his  possession 


444  APPENDIX  C. 

any  used  or  empty  box,  envelope,  wrapper,  case,  bottle, 
or  other  package,  to  whicli  is  affixed,  so  that  the  same 
may  be  obliterated  without  substantial  injurj^  to  such 
box  or  other  thing  aforesaid,  any  trademark,  registered 
pursuant  to  the  statutes  of  the  United  States,  not  so  de- 
faced, erased,  obliterated,  and  destroyed  as  to  prevent 
its  fraudulent  use,  shall,  on  conviction  thereof,  be  pun- 
ished as  prescribed  in  the  first  section  of  this  act. 

Section  7.  That  if  the  owner  of  any  trademark,  reg- 
istered pursuant  to  the  statutes  of  the  United  States,  or 
his  agent,  make  oath,  in  writing,  that  he  has  reason  to 
believe,  and  does  believe,  that  any  counterfeit  dies, 
plates,  brands,  engravings  on  wood,  stone,  metal,  or 
other  substance,  or  moulds,  of  his  said  registered  trade- 
mark, are  in  the  possession  of  any  person  with  intent  to 
use  the  same  for  the  purpose  of  deception  and  fraud,  or 
make  such  oaths  that  any  counterfeits  or  colorable  imi- 
tations of  his  said  trademark,  label,  brand,  stamp, 
wrapper,  engraving  on  paper  or  other  substance,  or 
empty  box,  envelope,  wrapper,  case,  bottle,  or  other 
package,  to  which  is  affixed  said  registered  trademark 
not  so  defaced,  erased,  obliterated,  and  destroyed  as  to 
prevent  its  fraudulent  use,  are  in  the  possession  of  any 
person  with  intent  to  use  the  same  for  the  purpose  of 
deception  and  fraud,  then  the  several  judges  of  the  cir- 
cuit and  district  courts  of  the  United  States,  and  the 
commissioners  of  the  circuit  courts  may,  within  their 
respective  jurisdictions,  proceed  under  the  law  relating 
to  search-warrants,  and  may  issue  a  search-warrant  au- 
thorizing and  directing  the  marshal  of  the  United  States 
for  the  proper  district  to  search  for  and  seize  all  said 
counterfeit  dies,  plates,  brands,  engravings  on  wood, 
stone,  metal,  or  other  substance,  moulds,  and  said  coun- 
terfeit trademarks,  colorable  imitations  thereof,  labels, 
brands,  stamps,  wrappers,  engravings  on  paper,  or  other 
substance,  and  said  empty  boxes,  envelopes,  wrappers, 
cases,  bottles  or  other  packages  that  can  be  found;  and 


PENAL  ACT  OF  AUGUST  14,  187G.  445 

upon  satisfactory  i>roof  being  made  that  said  counterfeit 
dies,  plates,  brands,  engravings  on  wood,  stone,  metal, 
colorable  imitations  thereof,  labels,  brands,  stamps, 
or  other  substance,  moulds,  counterfeit  trademarks, 
wrappers,  engravings  on  paper  or  other  substance, 
empty  boxes,  envelopes,  wrapj)ers,  cases,  bottles,  or 
other  packages,  are  to  be  used  by  the  holder  or  owner 
for  the  purpose  of  deception  and  fraud,  that  any  of  said 
judges  shall  have  full  power  to  order  all  said  counter- 
feit dies,  plates,  brands,  engravings  on  wood,  stone, 
metal,  or  other  substance,  moulds,  counterfeit  trade- 
marks, colorable  imitations  thereof,  labels,  brands, 
stamps,  wrappers,  engravings  on  paper  or  other  sub- 
stance, empty  boxes,  envelopes,  wrappers,  cases,  bottles, 
or  other  packages,  to  be  publicly  destroyed. 

Section  8.  That  any  person  who  shall,  with  intent  to 
defraud  any  person  or  persons,  knowingly  and  wilfully 
aid  or  abet  in  the  violation  of  any  of  the  provisions  of 
this  act,  shall  upon  conviction  thereof,  be  punished  by  a 
fine  not  exceeding  five  hundred  dollars,  or  imprisonment 
not  more  than  one  year,  or  both  such  fine  and  imprison- 
ment.^ 

1 — This  act  is  important  be-  the  certificate  of  registration  con- 
cause  of  its  connection  with  the  tained  words  to  show  that  the  al- 
Trademark  Cases,  100  U.  S.  82.  In  leged  owner  acquired  an  exclusive 
that  case  the  supreme  court  de-  property  in  the  mark  claimed, 
clared  the  act  of  1870  to  be  uncon-  United  States  v.  Braun,  39  Fed. 
stitutional  because  this  act  was  by  Rep.  775. 

its     express     terms     confined     to  This   statute   having  been   judi- 

frauds,  counterfeits,  and  unlawful  cially  declared  void  could   not  be 

use  of  trademarks  which  were  reg-  and  was  not  made  operative  by  the 

istered  under  the  provisions  of  the  enactment  of  the  statute  of  1881. 

former  act.     The  registration  act  United    States    v.    Koch,   40   Fed. 

being  invalid,  the  criminal  enact-  Rep.  250. 

ment  intended  to  protect  the  rights  The  requirements  of  an  applica- 

of  registrants  fell  with  it.    Trade-  tion    for   a   search-warrant     under 

mark  Cases.  100  U.  S.  82-99.  §  7  of  this  act   were    discussed   by 

It  was  held  that  there  could  be  Judge  Treat  in  Re  O'Donnell,  Fed. 

no  conviction  under  this  act  unless  Case  No.  10434,  14  Off.  Gaz.  379. 


APPENDIX  D. 


TRADEMARK  ACT  OF  MARCH  3,  188r. 

An  act  to  authorize  the  registration  of  trademarks 
and  protect  the  same. 

Be  it  enacted  by  the  Senate  and  House  of  Representa- 
tives of  the  United  States  in  Congress  assembled: 

§  1.-      That     owners  ^      of     trademarks  ^     used     in 
commerce  with  foreign  nations  or  with  the  Indian  tribes,^ 


1 — This  act  has  been  usually 
treated  as  valid.  South  Carolina 
V.  Seymour,  153  U.  S.  353;  67  Off. 
Gaz.  1191;  L.  H.  Harris  Drug  Co. 
V.  Stucky,  46  Fed.  Rep.  624;  Hen- 
nessy  v.  Braunschweiger,  89  Fed. 
Rep.  664.  But  in  a  late  case  Judge 
Jenkins  said:  "There  has  been  no 
ruling  upon  the  constitutionality 
of  this  act,  and  it  need  only  be 
said  that  its  validity  is  fairly 
doubtful."  Illinois  Watch  Case 
Co.  V.  Elgin  National  Watch  Co., 
94  Fed.  Rep.  667-669;  87  Off.  Gaz. 
2323;    35  C.  C.  A.  237. 

The  supreme  court,  in  affirming 
the  decree  of  the  court  of  appeals 
in  this  case,  expressly  declined 
passing  upon  the  question  of  the 
constitutionality  of  the  act.  Elgin 
National  Watch  Co.  v.  Illinois 
Watch  Case  Co.  (2),  179  U.  S.  665- 
677. 

This  act  presupposed  the  exist- 
ence of  a  valid  trademark  which 
might  be  registered  on  compliance 
with  the  requirements  of  the  act, 
and  registration  under  the  act  did 
not  in  any  manner  affect  the  na- 
ture or  function  of  the  mark.    Ed- 


ison v.  Thomas  A.  Edison,  Jr., 
Chemical  Co.,  128  Fed.  Rep.  1013. 

2— See  Notes,  Act  of  1870,  sec. 
77,  ante,  p.   411. 

3 — Ownership  is  a  prerequisite. 
A  carpet  cleaner  was  refused  regis- 
tration for  the  mark  used  by  him 
on  his  wagons  and  upon  carpets 
cleaned  by  him,  because  he  could 
not  comply  with  the  clause  of  the 
act  of  1870  requiring  a  statement 
of  the  class  of  merchandise  and 
the  particular  description  of  goods 
to  which  he  applied  the  mark.  Re 
Hankinson,  8  Off.  Gaz.  89.  An  offi- 
cial fish  inspector  has  no  trade- 
mark in  the  official  brand  used  by 
him,  because  he  has  no  private 
ownership  therein.  Chase  v.  Mays, 
121  Mass.  343.  A  certificate  of  reg- 
istration of  trademark  will  not  be 
issued  to  the  applicant  and  his  as- 
signee jointly.  Ex  parte  Spinner, 
35  MSS.  D.,  July,  1887.  A  trade- 
mark adopted  by  a  real-estate  deal- 
er for  use  in  the  course  of  his  busi- 
ness cannot  be  registered.  Ex 
parte  Roy,  54  Off.  Gaz.  1267.  When 
it  appears  that  several  parties 
have  the  right  to  the  use  of  the 


446 


TRADEMARK  ACT  OF  MARCU  3,  1S81. 


447 


mark,  independent  registration 
will  not  be  granted  to  either  of 
them.  Ex  parte  Langdon,  61  Off. 
Gaz.  286.  A  certificate  will  not  be 
Issued  to  the  assignee  of  the  ap- 
plicant. Ex  parte  Roasted  Cereals 
Co.,  57  MSS.  D.  455.  Even  when 
the  assignment  has  been  recorded. 
Ex  parte  Bassett,  55  Off.  Gaz.  997; 
Ex  parte  Spinner,  35  MSS.  D.  15. 

Thus  registration  was  refused 
■where  the  facts  showed  that  "ap- 
plicant is  a  voluntary  association 
or  league  of  flour  manufacturers, 
all  members  of  which  use  the  mark 
upon  their  product  and  have  an  in- 
terest severally  and  in  common  in 
its  protection;  and  the  present  ap- 
plication for  registration  is  made 
by  the  association  through  its  sec- 
retary, an  officer  duly  authorized 
to  that  end.  The  applicant  is  not 
a  corporation,  nor  is  it,  in  strict 
use  of  the  term,  a  partnership; 
but  it  is  a  voluntary  association 
or  league  or  union  of  the  kind  rec- 
ognized by  the  laws  and  courts  of 
the  state  of  its  domicile,  and  by 
the  laws  and  courts  of  nearly  all 
the  states  of  the  Union,  as  lawful 
and  of  the  kind  to  which  they  ex- 
tend protective  and  other  relief  in 
proper  cases.  As  an  association 
it  does  not  itself  make,  brand,  or 
sell  the  flour  to  which  its  mark  is 
applied;  but  its  members  by  its 
authority  use  the  selected  mark  on 
wheat  flour  of  their  own  manufac- 
ture. The  league  states  its  objects 
to  be:  'To  oppose  the  adulteration 
of  flour,  to  assist  in  enforcing  the 
law,  to  protect  its  honest  millers 
from  dishonest  competition,  to  ex- 
pose fraud,  to  maintain  the  integ- 
rity of  the  American  milling  trade, 
and  to  afford  buyers  a  guarantee 
that  they  can  obtain  from  mem- 
bers of  this  league  absolutely  pure 


flour.'  As  to  its  membership,  the 
rule  is:  'Any  miller  who  does  not 
adulterate  flour  can  join  this 
league  upon  the  payment  of  ten 
dollars  membership  fee,  and  exe- 
cuting the  affidavit  and  contract 
which  are  conditions  of  the  mem- 
bership.' •  *  *  But  the  owner- 
ship of  the  mark  is,  by  agreement 
of  all  interested  parties,  vested  in 
the  association,  and  the  right  to 
its  use  by  any  individual  arises 
only  from  permission  of  the  asso- 
ciation and  is  subject  to  forfeit- 
ure upon  failure  to  comply  with 
the  prescribed  terms."  The  com- 
missioner saying:  "I  can  find  no 
authority  in  the  trademark  act  per- 
mitting this  office  to  register  a 
trademark,  the  right  to  use  which 
is  farmed  out  and  which  is  not 
actually  used  by  the  would-be  reg- 
istrant. While  the  verified  decla- 
ration accompanying  the  statement 
in  this  case  sets  forth  that  no 
other  person,  firm  or  corporation 
has  any  right  to  use  the  mark,  yet 
the  brief  of  counsel  shows  that  all 
of  the  members  of  the  association, 
which  is  stated  to  be  composed  of 
a  majority  of  the  principal  flour 
manufacturers  of  the  United 
States,  have  a  right,  under  certain 
conditions,  to  use  the  mark." 
Duell,  Commissioner,  in  Ex  parte 
The  Anti-Adulteration  League,  86 
Off.  Gaz.  1803. 

A  word  to  be  used  as  the  name 
of  or  mark  for  a  patented  article 
will  not  be  admitted  to  registra- 
tion. In  so  ruling  the  commis- 
sioner has  said:  "In  view  of  the 
fact  that  under  the  trademark  act 
of  1881  a  certificate  of  registry  re- 
mains in  force  for  thirty  years 
from  its  date,  I  do  not  think  this 
office  should  register  trademarks 
which,   though   lawful   trademarks 


448 


APPENDIX  D. 


at  the  date  when  registry  is 
sought,  will  become  public  prop- 
erty before  the  expiration  of  the 
thirty  years.  By  so  doing  the  pat- 
ent office  would  be  placed  in  the 
light  of  attempting  to  aid  in  pro- 
longing a  monopoly,  which  mani- 
festly, under  the  decisions  of  the 
courts,  is  unwarranted.  To  thus 
attempt  to  give  the  petitioner  a 
monopoly  for  many  years  longer 
than  is  given  by  the  patent  would 
be  a  fraud  upon  the  public."  Duell, 
Commissioner,  in  Ex  parte  Velvril 
Co.,  84  Off.  Gaz.  807.  To  the  same 
effect  see  Ex  parte  F.  H.  Gilson 
Co.,  83  Off.  Gaz.   1992. 

4 — "Under  the  statute  of  March 
3,  1881.  'owners  of  trademarks,' 
under  certain  conditions  as  to  use 
and  upon  compliance  with  certain 
requirements  which  need  not  now 
be  considered,  are  entitled  to  ob- 
tain registration  therefor.  The 
phrase  'owners  of  trademarks' 
manifestly  limits  the  right  of  reg- 
istration to  such  person  or  per- 
sons, natural  or  artificial,  as  pos- 
sess the  legal  title  to  that  for 
which  registration  is  sought,  and  it 
further  limits  the  right  of  regis- 
tration to  that  which  is  a  trade- 
mark. It  is  therefore  incumbent 
upon  the  various  tribunals  of  the 
office  having  in  charge  the  regis- 
tration of  trademarks,  when  an 
application  for  registration  is  filed, 
to  decide  at  the  outset  two  ques- 
tions: (1)  Is  applicant  the  owner, 
and  (2)  is  that  which  he  seeks  to 
register  a  trademark?  Manifestly 
the  tribunals  of  this  office,  in  de- 
ciding the  question  of  ownership, 
are  not  precluded  by  the  state- 
ment and  declaration  of  ownership, 
made  by  the  applicant  from  con- 
sidering and  deciding  whether  he 
ir  or  is  not  the  owner  of  the  thing 
sought  to  be  registered.      It  is  not 


unusual  to  refuse  registration  be- 
cause of  the  absence  of  legal  title 
in  the  applicant — for  example, 
when  it  appears  that  before  appli- 
cant adopted  and  used  his  alleged 
mark  the  identical  thing  has  been 
adopted  and  used  by  another. 
Equally  is  it  the  province  and  duty 
of  the  tribunals  of  the  office  having 
jurisdiction  of  the  registration  of 
trademarks  to  decide  whether  the 
thing  presented  for  registration  is 
a  trademark.  An  applicant  may  be 
the  owner  of  the  thing  alleged  to 
be  his  trademark,  and  yet  the 
thing  presented  for  registration 
may  not  be  a  trademark.  The  state- 
ment and  declaration  of  applicant 
that  the  thing  presented  for  regis- 
tration is  a  trademark  are  not  con- 
clusive. The  question  is  what  the 
thing  is,  and  not  what  it  is  called. 
That  the  statute  vests  in  this  office 
the  power  to  pass  upon  these  two 
questions  I  believe,  and  to  pass 
upon  such  questions  has  been  the 
uniform  practice  of  my  predeces- 
sors ever  since  the  enactment  of 
the  trademark  law  of  1881."  Duell, 
Commissioner,  In  Ex  parte  The 
Bronson  Co.,  87  Off.  Gaz,  1782;  and 
in  Ex  parte  Buffalo  Pitts  Co.,  89 
Off.  Gaz.  2069. 

5 — Commerce  with  the  Indian 
tribes  may  be  conducted  wholly 
within  the  limits  of  a  single  state. 
"The  power  of  congress  is  not  de- 
termined by  the  locality  of  the 
traffic,  but  extends  wherever  inter- 
course with  Indian  tribes,  or  with 
any  member  of  an  Indian  tribe,  is 
found,  although  it  may  originate 
and  end  within  the  limits  of  a  sin- 
gle state."  Prentice  &  Egan,  Com- 
merce Clause  of  the  Federal  Con- 
stitution, p.  346,  citing  United 
States  v.  Holliday,  3  Wall.  407; 
Territory  v.  Guyott,  9  Mont.  46. 


TRADEMARK  ACT  OF  MARCH  3,  1881. 


449 


provided  such  owners  shall  be  domiciled  in  the  United 
States  or  located  in  any  foreign  country  or  tribe,  which, 
by  treaty,  convention,  or  law,^'  affords  similar  privi- 
leges to  citizens  of  the  United  States,  may  obtain  regis- 
tration^ of  such  trademarks  by  complying  with  the  fol- 
lowing requirements : 


6 — The  fact  that  a  mark  is  law- 
ful in  a  foreign  country  is  no  test 
of  its  registrability  here.  Re  Moet 
&  Chandon.  18  MSS.  D.  259.  In 
that  case  registration  was  refused 
although  the  mark  had  been  reg- 
istered in  France.  On  the  other 
hand  ,the  words  "Germania"  and 
"Goliath"  have  been  registered  in 
the  United  States  by  citizens  of 
Germany,  notwithstanding  the  fact 
that  the  words  could  not  be  regis- 
tered in  Germany  as  trademark, 
because  it  appeared  that  citizens 
of  the  United  States  had  been  per- 
mitted to  register  marks  in  Ger- 
many for  which  German  citizens 
would  not  be  allowed  registration. 
Re  Manske  &  Co.,  64  Off.  Gaz.  858; 
Re  Schmidt,  53  MSS.  D.  7.  Un- 
der this  act  a  foreigner  is  entitled 
to  no  other  or  further  rights  than 
a  citizen  of  the  United  States.  Ex 
parte  Buffalo  Pitts  Co.,  89  Off.  Gaz. 
2069. 

The  distinction  between  the 
terms  "treaty"  and  "convention" 
is  purely  artificial.  "A  treaty  is 
primarily  a  contract  between  two 
or  more  independent  nations."  Mr. 
Justice  Field,  in  Whitney  v.  Rob- 
ertson, 124  U.  S.  190-194. 

The  International  Convention 
for  the  Protection  of  Industrial 
Property,  signed  at  Paris,  March 
20,  1883,  and  adceded  to  by  presi- 
dential proclamation  on  behalf  of 
the  United  States,  March  29,  1887, 
cannot  become  operative  in  the  ab- 
sence of  federal  legislation.  Opin- 
29 


ions  of  the  Attorney-General,  1889, 
p.  253;  47  Off.  Gaz.  398;  Ex  parte 
Zwack  &  Co.,  76  Off.  Gaz.  1855. 

For  treaties  and  conventions, 
1776-1887,  see  "Treaties  and  Con- 
ventions Between  the  United 
States  and  Other  Powers:"  Gov- 
ernment Printing  Office,  1889.  See 
post,  Appendix  Q. 

The  declaration  with  Great  Brit- 
ain is  drawn  so  as  to  confer  mu- 
tual trademark  rights  upon  the 
subjects  and  citizens  of  each  of 
the  contracting  parties  throughout 
the  dominions  and  possessions  of 
the  other.  Citizens  or  residents 
of  British  colonies  are  therefore 
permitted  to  register  their  trade- 
marks under  this  treaty  whenever 
it  is  satisfactorily  shown  that  in 
the  respective  colonies  similar  pro- 
tection is  afforded  to  citizens  of 
the  United  States. 

7 — "Registration  under  the  act  of 
1881  is  of  but  little,  if  any,  value, 
except  for  the  purpose  of  creating 
a  permanent  record  of  the  date  of 
adoption  and  use  of  the  trade- 
mark: or  in  cases  where  it  is  nec- 
essary to  give  jurisdiction  to  the 
United  States  courts."  Hawley,  J., 
in  Hennessy  v.  Braunschweiger,  89 
Fed.  Rep.  664.  To  the  same  effect 
see  Waukesha  Hygeia  Mineral 
Springs  Co.  v.  Hygeia  Distilled 
Water  Co..  70  Off.  Gaz.  1319;  63 
Fed.  Rep.  438;  11  C.  C.  A.  277; 
Sarrazin  v.  W.  R.  Irby  Cigar  &  To- 
bacco Co.,  93  Fed.  Rep.  624-627; 
Brower  v.   Boulton,   53   Fed.   Rep. 


450 


APPENDIX  D. 


1st.  By  causing  to  be  recorded  in  the  Patent  Office  a 
statement  specifying  name,**  domicile,*^  location/^  and 
citizenship"  of  the  party  applying;  the  class  of  mer- 
chandise and  the  particular  description  of  goods  com- 
prised in  such  class  to  which  the  particular  trademark 


389;  Adams  v.  Heisel,  31  Fed.  Rep. 
279-281. 

The  act  does  not  define  trade- 
marks.— "It  will  be  observed  that 
the  statute  (referring  to  the  act  of 
1870)  does  not  define  the  term 
'trademark,'  or  say  of  what  it  shall 
consist.  The  term  is  used  as 
though  its  signification  was  al- 
ready known  to  the  law.  It  speaks 
of  it  as  an  already  existing  thing, 
and  protects  it  as  such.  The  thing 
to  be  protected  must  be  an  exist- 
ing lawful  trademark,  or  some- 
thing that  may  then  for  the  first 
time  be  adopted  as  a  lawful  trade- 
mark independent  of  the  statute. 
There  must  be  a  lawful  trade- 
mark adopted  without  reference  to 
the  statute,  and  then,  by  taking 
the  prescribed  steps,  that  trade- 
mark, so  already  created  and  ex- 
isting, may  receive  certain  further 
protection  under  the  statute." 
Moorman  v.  Hoge,  2  Sawy.  78.  The 
reasoning  of  this  opinion  is  equal- 
ly applicable  to  the  act  of  1881. 
L.  H.  Harris  Drug  Co.  v.  Stucky, 
46  Fed.  Rep.  624-628;  Ex  parte  M. 
Block  &  Co.,  40  Off.  Gaz.  443. 

8 — The  christian  name  of  the 
applicant  should  be  given  In  all 
cases,  instead  of  the  initial  only, 
for  reasons  indicated  in  Monroe 
Cattle  Co.  V.  Becker,  147  U.  S.  47: 
United  States  v.  Upham,  43  Fed. 
Rep.  68. 

9 — Domicile,  i.  e.,  the  place  of 
residence  of  the  applicant;  "that 
place  in  which  he  has  fixed  BTis 
habitation,  without  any  present  in- 


tention of  departing  therefrom." 
Gordon,  J.,  in  Carey's  Appeal,  75 
Pa.  St.  201-205. 

10 — Where  an  application  shows 
the  applicant  to  be  a  citizen  of  one 
foreign  country  and  located  in  an- 
other, his  application  will  be  gov- 
erned by  the  existing  treaty,  con- 
vention or  law  of  the  country  of 
his  location.  By  locaton  is  meant 
the  situs  of  the  factory  or  other 
place  of  business  of  the  applicant. 
Re  Haggenmacher,  60  Off.  Gaz.  438. 

11 — What  the  applicant's  citizen- 
ship may  be  is  wholly  immaterial. 
His  right  to  registration  is  gov- 
erned by  the  country  of  his  loca- 
tion, which  may  or  may  not  be 
identical  with  that  of  his  citizen- 
ship.    Re  Haggenmacher,  supra. 

Citizenship  defined. — Citizenship 
means  "residence  with  intention  of 
remaining  permanently  at  that 
place.  A  man  may  reside  in  a  state 
for  an  indefinite  period  of  time 
without  becoming  a  citizen,  but 
the  moment  a  man  takes  up  his 
residence  in  a  state  different  from 
that  where  he  formerly  was  domi- 
ciled or  was  a  citizen,  with  intent 
and  purpose  of  making  the  new 
place  of  residence  his  future  home, 
that  moment  he  loses  his  former 
domicile,  and  becomes  domiciled  in 
the  new  place;  or  in  other  words, 
he  ceases  to  be  a  citizen  of  the 
former  place  of  residence  and  be- 
comes a  citizen  of  the  state  of  his 
adoption."  Turner,  J.,  in  Winn  v. 
Gilmer,   27   Fed.   Rep.   817. 


TR.VDEMARK  ACT  OF  MARCH  3,  1881. 


451 


has  been  apjjropriated;'-  a  description  of  the  trademark 
itself'^  fac-similes  thereof/^  and  a  statement  of  the  mode 


12 — The  fact  that  the  Araoskeag 
Manufacturing  Company  had  ap- 
plied its  mark  to  cotton  goods  ex- 
cept prints  did  not  give  it  an  ex- 
clusive right  to  its  use  on  all  cot- 
ton goods  including  prints.  Amos- 
keag  Mfg.  Co.  v.  Garner,  55  Barb. 
151.  The  term  "Fancy  Goods"  in- 
cludes too  many  sub-classes  to  be 
allowed  in  one  registration.  Re 
Lisner,  Comm.  Decis.  1878,  p.  46. 
Registration  has  been  refused  for 
a  mark  to  cover  an  indurated 
blood  compound  and  the  various 
articles,  such  as  door  knobs,  to  be 
made  from  it.  Re  Dibble  Mfg.  Co., 
18  MSS.  D.  428.  Application  for 
registration  of  a  mark  to  be  used 
upon  druggists'  sundries  was  re- 
fused because  the  words  were  too 
indefinite.  Re  Maw,  Son  &  Thomp- 
son, 22  MSS.  D.  403. 

What  one  registration  may  cover. 
— A  single  trademark  may  be  reg- 
istered to  be  applied  to  all  goods 
made  of  hard  rubber.  Re  India 
Rubber  Comb  Co.,  16  MSS.  D.  38. 
Bourbon,  wheat  and  rye  whiskies, 
wines,  brandies  and  gins,  may  be 
included  in  one  registration.  Re 
Boehm  &  Co.,  Comm.  Decis.  1875, 
p.  103;  as  may  "agricultural  im- 
plements," Re  Manny  &  Co.,  17 
MSS.  D.  155;  "canned  goods,"  Re 
Fitzpatrick,  Davis  &  Co.,  18  MSS. 
D.  278;  and  "cutlery,"  Re  Kampfe 
Bros.,  58  MSS.  D.  306;  as  well  as 
proprietary  medicinal  and  toilet 
compounds,  Re  Knight.  38  MSS. 
D.  341.  One  registration  may, 
however,  cover  all  the  classes  of 
goods  upon  which  the  trademark 
has  been  used.  Ex  parte  Clark- 
Jewell-Wells  Co..  83  Off.  Gaz.  915. 


But  a  picture  and  a  word  cannot 
be  embodied  in  the  same  registra- 
tion unless  they  are  true  alterna- 
tives. Ex  parte  J.  D.  Richards  & 
Sons,  54  MSS.  D.  425;  Ex  parte 
Adam  Roth  Gro  Co.,  62  Off.  Gaz. 
315;  Ex  parte  Kinney,  72  Off.  Gaz. 
1349;  Ex  parte  Muir,  87  Off.  Gaz. 
357;  Ex  parte  Lazarus  Schwarz  & 
Upper,  64  Off.  Gaz.  1396. 

13 — The  description  must  dis- 
tinguish the  essential  from  the 
non-essential  features  of  the  mark. 
Re  Volta  Belt  Co.,  8  Off.  Gaz.  144. 
The  essential  features  being  those 
serving  to  distinguish  the  goods  of 
the  applicant,  an  essential  feature 
cannot  be  anything  that  is  not  a 
valid  trademark,  such  as  the  geo- 
graphical word  "Lancaster."  Re 
Farnum  &  Co.,  Comm.  Decis.  1880, 
p.  155;  18  Off.  Gaz.  412;  Re  Adri- 
ance,  Piatt  &  Co.,  Comm.  Decis. 
1881,  p.  52;  20  Off.  Gaz.  1820;  Re 
Pierce,  23  MSS.  D.  16.  The  de- 
scription and  fac-simile  incorpor- 
ated in  the  certificate  of  registra- 
tion are  evidence  to  show  the  ex- 
tent of  the  owner's  claim  of  trade- 
mark, when  he  sues  for  its  protec- 
tion as  a  common-law  trademark. 
Richter  v.  Reynolds,  59  Fed.  Rep. 
577;  Kohler  Mfg.  Co.  v.  Beeshore, 
53  Fed.  Rep.  262;  s.  c,  8  C.  C. 
A.  215.  The  essential  feature  of 
a  trademark  is  not  that  which  the 
registrant  elects  to  designate  as 
such,  but  that  which  would  strike 
the  public  mind  as  its  most  salient 
feature.  Ex  parte  Standard  Fash- 
ion Co..  89  Off.  Gaz.  189. 

14 — This  section  does  not  con- 
template registration  of  form,  ma- 
terial, or  color.    Materials  are  not 


•i52 


APPENDIX  D, 


in  wbicli  the  name  is  applied  and  affixed  to  goods/ ^  and 
the  length  of  time  during  which  the  trademark  has 
been  used.^*^ 


subject  to  appropriation  as  trade- 
mark; it  has  been  so  held  in  re- 
gard to  tin  used  as  tags  upon  plug 
tobacco,  Lorillard  v.  Pride,  28  Fed. 
Rep.  434;  nor  is  a  method  of  bronz- 
ing horse-shoe  nails,  Putnam  Nail 
Co.  V.  Bennet,  43  Fed.  Rep.  800; 
59  Fed.  Rep.  909;  8  C.  C.  A.  362; 
nor  the  form  of  sticks  of  chewing 
gum,  Adams  v.  Heisel,  31  Fed.  Rep. 
279;  nor  the  method  in  which 
goods  are  arranged  in  packages. 
Ibid.,  and  Davis  v.  Davis,  27  Fed. 
Rep.  490. 

For  further  discussion  of  form, 
color,  etc.,  see  ante,  pp.  247  et  seq. 

A  fac-simile  need  not  contain 
any  unessential  portion  of  the 
mark  sought  to  be  registered.  Re 
Watson,  16  MSS.  D.  467;  Re  Arm- 
strong &  Co.,  26  MSS.  D.  260. 

One  fac-simile  only  is  sufficient 
to  illustrate  the  mode  of  using  the 
mark.  Re  Kimball,  Comm.  Decis. 
1887,  p.  54. 

Fac-simile  defined. — "A  fac-sim- 
ile is  an  exact  counterpart  of  an 
original,  and  a  fac-simile  repre- 
sented by  a  drawing  is  an  exact 
counterpart  of  an  original,  so  far 
as  the  nature  of  a  drawing  per- 
mits. A  close  adherence  to  the 
language  of  the  statute  would  seem 
to  require  that  in  each  case  the 
trademark  and  nothing  but  the 
trademark  should  be  represented 
by  the  drawing,  and  while,  perhaps, 
it  would  be  going  too  far  to  apply 
in  all  cases  a  rule  so  rigorous,  it 
is  certainly  within  the  discretion 
of  the  office  to  insist  upon  It  in 
cases  where  .  .  .  legitimate 
doubts  arise  as  to  whether  protec- 


tion should  not  be  sought  through 
the  law  relating  to  designs.  In 
my  judgment  the  cases  are  very 
rare  in  which  the  registration  of  a 
trademark  under  the  statute  re- 
quires or  should  permit  of  any 
other  matter  than  the  fac-simile  of 
the  trademark."  Mitchell,  Com- 
missioner, in  Ex  parte  Hudson,  55 
Off.  Gaz.  1401.  Applicants  are  re- 
stricted to  symbols  which  conform 
to  their  fac-similes  as  well  as  to 
their  verbal  descriptions.  Duke  v. 
Green,  16  Off.  Gaz.  1094. 

15 — The  statement  of  the  mode 
of  application  must  be  given.  Ex 
parte  Hudson,  55  Off.  Gaz.  1401.  It 
must  appear  that  the  trademark  is 
intended  to  be  used  upon  "goods  or 
manufactured  articles,  the  general 
objects  of  commerce."  Ex  parte 
Roy  and  Nourse,  54  Off.  Gaz.  1267. 
The  use  of  a  trademark  upon  bill- 
heads, letter-heads,  cards  and  cir- 
culars used  in  a  business  does  not 
come  within  the  contemplation  of 
the  statute;  although  it  would  be 
properly  a  trademark  if  used 
thereon  as  articles  of  commerce 
and  not  as  mere  vehicles  of  com- 
munication between  a  dealer  and 
other  persons.  Ibid.  The  things 
to  which  a  trademark  may  be  af- 
fixed so  as  to  be  entitled  to  regis- 
tration are  goods,  wares  and  mer- 
chandise— articles  that  may  be 
transported,  in  contradistinction  to 
those  fixed  species  of  property 
which  the  law  includes  under  the 
term  real  estate.  Ibid.  Registra- 
tion under  this  act  Is  limited  to 
marks  used  upon  manufactures  or 
merchandise.  Re  Hankinson,  8  Off. 


TRADEMxVRK  ACT  OF  M.VKCU  3,  1881. 


453 


2d.  By  paying  into  the  treasury  of  the  United  States 
the  sum  of  twenty-five  dollars/^  and  complying  with 
such  regulations  as  may  be  prescribed  by  the  Commis- 
sioner of  Patents. 


Gaz.  89.  It  is  a  sufficient  applica- 
tion If  the  marlc  is  used  in  adver- 
tising, and  a  lithographed  repro- 
duction of  it  inserted  in  each  box 
containing  the  merchandise.  Hay 
&  Todd  Mfg  Co.  V.  Querns  Broth- 
ers, 86  Off.  Gaz.  1323. 

16 — The  language  of  the  Act  of 
1871  was  "the  length  of  time,  if 
any,  during  which  the  trademark 
has  been  used."  This  was  con- 
strued to  admit  marks  to  registra- 
tion that  never  had  been  used  in 
commerce.  Re  Rothschild,  7  Off. 
Gaz.  220.  It  must  now  be  shown 
as  a  prerequisite  to  registration 
that  there  has  been  actual  applica- 
tion of  the  mark  to  merchandise 
and  actual  user  in  commerce.  Uni- 
ted States  V.  Seymour,  66  Off.  Gaz. 
1167.  Registration  under  this  sta- 
tute avails  nothing  if  the  name  or 
symbol  is  never  used.  Siegert  v. 
Abbott,  72  Hun,  243. 

It  was  held  in  one  case  that  a 
citizen  of  France  who  had  not  de- 
posited his  mark  in  the  Patent  Of- 
fice under  the  provisions  of  the 
treaty  of  1869  between  the  United 
States  and  France  could  not  main- 
tain an  action  tor  infringement. 
Lacroix  v.  Escobal,  37  La.  Ann. 
533.  But  in  a  later  case  it  is  held 
that  a  registration  under  the  Act 
of  1881  by  a  French  citizen  ren- 
ders the  deposit  of  the  mark  under 
the  terms  of  that  convention  un- 
necessary. Soci6t6  de  la  Benedic- 
tine v.  Micalovitch,  36  Alb.  L.  J. 
364.  The  dates  of  adoption  set 
forth  in   the  applications   of  two 


rival  registrants  are  not  conclu- 
sive. Einstein  v.  Sawhill,  61  Oft. 
Gaz.  287.  Where  actual  user  ap- 
pears to  have  been  first  made  after 
application  for  registry,  the  mark 
may  be  admitted  to  registration 
upon  the  filing  of  a  supplemental 
application.  Einstein  v.  Sawhill 
(2),   64    Off.   Gaz.    1533. 

User  in  a  foreign  country  alone 
does  not  entitle  an  applicant  to  reg- 
istration under  this  section. 
Farmers  Mfg.  Co.  v.  W.  R.  Har- 
rison &  Co.,  96  Off.  Gaz.  2062;  Le- 
prince  v.  Her  &  Morris,  92  Off. 
Gaz.  189.  "Limited  sales  in  this 
country  by  a  foreign  manufacturer 
upon  especial  orders  to  supply  par- 
ticular customers"  do  not  give  a 
common  law  right  to  the  mark 
"since  they  did  not  constitute  a 
use  of  the  mark  in  such  circum- 
stances as  to  publicity  and  length 
of  use  as  to  show  an  intention  to 
adopt  it  as  a  trademark."  Allen, 
Commissioner,  in  Farmers  Mfg.  Co. 
V.  W.  R.  Harrison  &  Co.,  96  Off. 
Gaz.   2062. 

17 — The  fee  cannot  be  refunded 
because  registration  is  refused.  Re 
Thayer,  54  Off.  Gaz.  957.  Where 
the  domestic  branch  of  a  house 
having  offices  in  the  United  States 
and  abroad,  filed  an  application  in 
ignorance  of  the  fact  that  an  iden- 
tical application  had  been  made 
by  one  of  the  foreign  offices,  the 
fee  paid  on  the  second  application 
was  refunded.  Re  Finlayson,  Bous- 
field   &  Co.,   61   Off.   Gaz.   152. 


454 


APPENDIX  D. 


§  2.^^ 


That  the  application  prescribed  in  the  forego- 
ing section  must,  in  order  to  create  any  right  whatever 
in  favor  of  the  party  filing  it,  be  accompanied  by  a  writ- 
ten declaration  verified  by  the  person,  or  by  a  member 
of  a  firm,^**  or  by  an  officer  of  a  corporation  applying,  to 
the  effect  that  such  party  has  at  the  time  a  right  to  the 
use  of  the  trademark  sought  to  be  registered,  and  that 
no  other  person,  firm  or  corporation  has  the  right  to 
such  use,  either  in  the  identical  form  or  in  any  such  near 
resemblance  thereto  as  might  be  calculated  to  deceive,^^ 
that  such  trademark  is  used  in  commerce  with  foreign 
nations  or  Indian  tribes,  as  above  indicated,^^  and  that 
the  description  and  fac-similes  presented  for  registry 
truly  represent  the  mark  sought  to  be  registered.^^ 

§  3.-^  That  the  time  of  the  receipt  of  any  such  appli- 
cation shall  be  noted  and  recorded.  But  no  alleged 
trademark  shall  be  registered  unless  the  same  appear  to 


18_See  Act  of  1870,  sec.  77, 
ante,    p.    411. 

19 — An  application  of  a  partner- 
ship cannot  properly  be  made  by- 
one  not  a  member  of  the  firm  but 
merely  a  so-called  "director."  Ex 
parte  Kirker,  Greer  &  Co.  (Ltd.), 
37   MSS.  D.   392. 

20 — Registration  will  be  refused 
whenever  in  the  opinion  of  the 
commissioner  the  mark  offered  is 
so  similar  to  a  registered  mark  as 
to  be  likely  to  lead  to  mistake  or 
confusion.  Ex  parte  Coon,  58  Off. 
Gaz.  946.  In  case  of  doubt  •  con- 
cerning such  similarity,  that  doubt 
will  be  resolved  against  (he  appli- 
cant. Re  Bowe,  50  MSS.  D.  168; 
Re  Bogardus,  50  MSS.  D.  2. 

21 — The  declaration  on  oath  that 
there  has  been  a  user  of  the  mark 
in  the  classes  of  commerce  speci- 
fied is  insisted  on  by  the  Patent 
Office.  Ex  parte  Strasburger  & 
Co.,  20  Off.  Gaz.  155. 


22 — A  word  and  a  figure  which 
are  true  alternatives  constitute  a 
single  mark.  Morrison  v.  Case,  9 
Blatchf.  548;  2  Off.  Gaz.  544.  Hence 
they  may  be  covered  by  one  regis- 
tration. Re  Weaver,  10  Off.  Gaz. 
1;  Ex  parte  Kinney,  72  Off.  Gaz. 
1346.  But  where  they  are  not  true 
alternatives,  as  in  the  case  of  the 
word  "Crescent"  and  the  figure  of 
the  crescent  moon,  and  the  word 
and  figure  might  convey  wholly 
different  meanings  to  the  observer, 
they  will  not  be  registered  upon  a 
single  application.  Ex  parte  Laz- 
arus Schwarz  &  Lipper,  64  Off. 
Gaz.  1396;  Ex  parte  Roth  Grocery 
Co.,  62  Off.  Gaz.  315. 

23— See  Act  of  1870,  sees.  79,  80, 
ante.  The  fact  that  this  act 
does  not  expressly  exclude  de- 
scriptive words  from  registra- 
tion does  not  raise  a  presumption 
that  descriptive  words  shoul'd  be 
admitted    to   registration.       L.   H. 


TRADEMARK  ACT  OF  MARCH  3,  1881. 


455 


be  lawfully-'  used  as  such  by  the  applicant  in  foreign 
commerce  or  commerce  with  Indian  tribes,  as  above  nien- 
tioned,  or  is  within  the  provision  of  a  treaty,  convention, 
or  declaration  with  a  foreign  power;  nor  which  is  merely 


Harris  Drug  Co.  v.  Stucky,  4tJ  Fed. 
Rep.  624-627. 

24 — See  cases  cited  in  note  to 
sec.  79  of  the  Act  of  1870,  ante. 
A  mark  that  is  deceptive  in  its 
nature  will  not  receive  registra- 
tion. Ex  parte  Bloch  &  Co.,  40 
Off.  Gaz.  443;  Re  Chichester  Chem- 
ical Co.,  52  Off.  Gaz.  1061;  Re  Amer- 
ican Sardine  Co.,  Comm.  Decis. 
1873,  p.  82;  Re  Grove,  67  Off.  Gaz. 
1447.  The  coat-of-arms  of  the 
United  States,  or  either  of  the 
states,  will  not  be  admiited  to  reg- 
istration. Ex  parte  Schmachten- 
berg  Bros.,  51  MSS.  D.  204. 

Nor  will  a  descriptive  word:  as 
"Albany  Beef,"  for  canned  stur- 
geon. Re  Ames,  23  Off.  Gaz.  344; 
"Chili  Colorow,"  for  table  sauce, 
Re  Railton,  25  MSS.  D.  321;  "Time- 
Keeper,"  for  watches.  Ex  parte 
Strasburger  &  Co.,  20  Off.  Gaz. 
155;  "Cristalline,"  for  artificial 
jewels.  Ex  parte  Kipling,  24  Off. 
Gaz.  899. 

Nor  a  picture  or  word  that  is 
descriptive  or  deceptive.  Ex  parte 
Martin,  89  Off.  Gaz.  2258;  Ex  parte 
Wolf,  80  Off.  Gaz.  1271;  Ex  parte 
Grove,  67  Off.  Gaz.  1447. 

Nor  a  geographical  word:  as 
"Cromarty,"  for  dried  fish.  Re 
Proctor,  Jr.,  51  Off.  Gaz.  1785; 
"Trenton,"  for  saws.  Re  American 
Saw  Co.,  58  Off.  Gaz.  521;  "Clover- 
dale,"  Re  Hendley,  72  Off.  Gaz. 
1654.  In  many  instances.  Tiowever, 
where  the  commissioner  has  deem- 
ed the  geographical  word  to  be 
used   in   a  purely   arbitrary  sense 


it  has  been   admitted   to   registra- 
tion.   Re  Cornwall  &  Bros.,  12  Off. 
Gaz.  312;  Ex  parte  Tietgens  &  Rob- 
ertson, 87  Off.  Gaz.  2117.     The  fol- 
lowing extracts   from   leading  rul- 
ings of  the  Patent  Office  may  serve 
as   guides   for   applicants    seeking 
registration        for        geographical 
words.     Their  registrabUity  "is  to 
be  determined  in  view  of  the  cir- 
cumstances of  each  particular  case. 
.     .     .     One     geographical      name 
might  be  either  descriptive  or  de- 
ceptive;      another       geographical 
name  applied  to  the  same  article 
might  be  neither."     Thus,   it  was 
held  that  it  having  become  a  com- 
mon  practice  to   apply  the  words 
"Irish,"  "Limerick,"   etc.,  to  soap, 
there  was  no  objection  to  register- 
ing the  word  "Dublin,"  as  applied 
to  soap;    in   view   of   the  state  of 
the   trade   and   the   nature  of   the 
article,   "Dublin"   applied   to   soap 
manufactured  in  this  country,  was 
neither   descriptive  nor   deceptive. 
This  doctrine  was  announced  in  a 
decision    of    Acting  Commissioner 
Doolittle.  refusing  registration  for 
the  word   "French"  as  applied   to 
American     made     paints     on     the 
ground  that  it  was  deceptive.     Re 
J.    Marsching  &   Co.,   15    Off.   Gaz. 
294.     In  a  later  decision,  refusing 
registration   to   the   word   "Clover- 
dale"  as   a   trademark  for  canned 
fruits  and  vegetables.  Acting  Com- 
missioner   Fisher    announced    the 
following      classification:        "Geo- 
graphical names  may  for  conveni- 
ence be  divided  into  three  classes; 
first,    those   that   are    well    known 


456 


APPENDIX  D, 


the  name  of  the  applicant,-'^  nor  which  is  identical  with  a 
registered  or  known  trademark  ^'^  owned  bv  another  and 


and  in  common  use — such,  for  ex- 
ample, as  'United  States,'  'New 
York,'  'San  Francisco,'  etc.  The 
law  is  settled  that  words  coming 
under  this  class  ought  not  to  be 
registered.  The  second  class  in- 
cludes words  which  in  their  pri- 
mary significance  are  not  geograph- 
ical, even  tnough  they  may  appear 
in  the  Postal  Guide  or  similar  pub- 
lications. Such  words  as  'trilby,' 
'Creole,'  'puritan'  and  'volunteer,' 
are  good  examples  of  this  class. 
These  words,  it  seems  to  me,  ought 
not  to  be  refused  registration  on 
the  ground  that  they  are  geographi- 
cal, since  it  cannot  fairly  be  said 
that  they  are  'words  in  common 
use  as  designating  locality  or  sec- 
tion of  a  country.'  The  third 
class  would  logically  occupy  a  posi- 
tion between  the  tv/o  classes  men- 
tioned above,  and  it  consists  of 
words  which  primarily  have  a 
geographical  meaning — for  exam- 
ple, terms  ending  or  compounded 
with  such  words  as  'city,'  'town,' 
'shire,'  'mount,'  or  'mont.'  Such 
words,  I  think,  should  not  be  reg- 
istered, for  the  reason  that  they 
are  clearly  geographical  in  their 
primary  significance,  even  if  it  can- 
not be  said  that  they  are  widely 
enough  known  to  come  strictly  un- 
der the  first  class.  It  seems  to  me 
that  the  word  in  question,  'Clover- 
dale,'  clearly  comes  under  the  third 
class."  Ea?  parte  Hendley,  72  Off. 
Gaz.  1654.  A  geographical  word 
does  not  become  properly  registra- 
ble by  being  enclosed  in  a  geomet- 
rical figure.  So  the  word  "Yuca- 
tan" was  refused  registration  as  a 
mark  for  leather,  even  though  en- 
closed in  a  square  figure.  Ex  parte 
Weil,  83  Off.  Gaz.  1802. 


25 — This  prohibition  is  strictly 
enforced.  Even  a  name  used  as  a 
mark  for  twenty  years,  and  admit- 
ted to  registration  under  the  act 
of  1870  has  been  refused  registra- 
tion under  this  statute.  Re  Fair- 
child,  21  Off.  Gaz.  789.  Congress 
by  an  enactment  under  date  of 
August  5.  1882,  provided:  "That 
nothing  contained  in  the  law  (of 
March  3,  1881),  shall  prevent  the 
registry  of  any  lawful  trademark 
rightfully  used  by  the  applicant  in 
foreign  commerce  or  commerce 
with  Indian  tribes  at  the  time  of 
the  passage  of  said  act."  22  Stats, 
at  Large,  p.  298.  This  proviso  has 
admitted  to  registration  names  of 
corporations,  as,  for  example,  the 
words  "Union  Metallic  Cartridge 
Co.,"  which  were  in  use  as  mer- 
chandise marks  prior  to  March  3, 
1881.  But  no  name  of  a  corpora- 
tion not  used  prior  to  that  time 
as  a  mark  can  now  be  admitted  to 
registration.  Ex  parte  Creedmore 
Cartridge  Co.,  56  Off.  Gaz.  1333. 
And  see  note  to  the  act  of  August 
5,  1882.  Registration  has  been  re- 
fused to  a  name  as  part  of  a  trade- 
mark which  also  included  a  device. 
Ex  parte  Adriance,  Piatt  &  Co.,  20 
Off.  Gaz.  1820.  But  a  name  used 
as  part  of  an  old  combination 
trademark  has  been  admitted  to 
registry.  Ex  parte  Frieberg  & 
Workum,  20  Off.  Gaz.  1164.  A 
proper  name  joined  to  a  geographi- 
cal name  does  not  constitute  a 
valid  trademark,  therefore  "Buf- 
falo Pitts"  was  refused  registra- 
tion as  a  trademark  for  threshing 
machines.  Ex  parte  Buffalo  Pitts 
Co.,  89  Off.  Gaz.  2069. 

26 — Registration  has  been  refus- 
ed  where   the    applicant's    mark. 


TR.\DEMARK  ACT  OF  MARCH  3,  1881. 


457 


appropriated  to  the  same  class  of  merchandise,  or  which 
so  nearly  resembles  some  other  person's  lawful  trade- 
mark as  to  be  likely  to  cause  confusion  or  mistake  in  the 
mind  of  the  public,  or  to  deceive  purchasers.^'^  In  an 
aj^plication  for  registration  the  commissioner  of  patents 
shall  decide  the  presumptive  lawfulness  of  claim  to  the 
alleged  trademark;-''  and  in  any  dispute  between  an  ap- 
plicant and  a  previous  registrant,  or  between  ai)plicants, 
he  shall  follow,  so  far  as  the  same  may  be  applicable,  the 


"Triumphant"  for  flour,  had  been 
registered  by  another  under  the 
act  of  1870,  and  not  re-registered 
under  the  act  of  1881.  Ex  parte 
Lyon,  Dupuy  &  Co.,  28  Off.  Gaz. 
191;  Dyrenforth,  Acting  Commis- 
sioner, tersely  observing  that  "To 
decide  otherwise  would  be  to  open 
Pandora's  box  and  turn  loose  fraud 
upon  individuals  and  imposition 
upon  the  public."  The  fact  that 
the  applicants  used  the  mark  in 
foreign  commerce  while  the  record 
did  not  show  the  registrant  to 
have  done  so  was  held  immaterial. 
Ibid;  and  to  the  same  effect,  Yale 
Mfg.  Co.  V.  Yale,  30  Off.  Gaz.  1183. 
A  trademark  consisting  of  a  de- 
sign will  not  be  admitted  to  regis- 
tration, when  the  same  design  has 
been  embodied  in  a  design  patent 
granted  to  another.  Ex  parte  Lee 
&  Shepard,  24  Off.  Gaz.  1271. 

27 — The  commissioner  must  de- 
cide, "first,  if  the  applicant  has 
actually  used  the  trademark  in 
lawful  commerce  with  foreign  na- 
tions or  with  the  Indian  tribes, 
and  then  if  he  has  the  right  to  the 
use  of  it  at  all.  If  he  finds  that 
the  alleged  trademark  is  the  name 
of  the  applicant  or  any  other 
name  which  cannot  lawfully  be 
converted  into  a  trademark  at 
common  law,  or  that  it  is  identi- 
cal with  the  trademark  of  another. 


registered  or  unregistered,  or  is  a 
deceptive  imitation  of  another,  or 
that  it  is  not  the  property  of  the 
applicant,  he  cannot  admit  it  to 
registration,  though  he  may  be  sat- 
isfied that  the  applicant  has  used 
it  in  regular  commerce  with  for- 
egin  nations  or  the  Indian  tribes." 
Court  of  Appeals,  District  of  Co- 
lumbia, by  Sheppard,  J.,  in  United 
States  V.  Seymour,  66  Off.  Gaz. 
1167-1169.  Where  a  part  of  the 
applicant's  mark  was  the  word 
"Railway,"  which  word  had  been 
registered  by  another,  the  applica- 
tion was  refused.  Ex  parte  Stras- 
burger  &  Co.,  20  Off.  Gaz.  155.  The 
question  presented  to  the  commis- 
sioner upon  an  issue  of  anticipa- 
tion is  "whether  the  trademark 
sought  to  be  registered  is  so  simi- 
lar to  any  trademark  already  reg- 
istered for  use  upon  the  same 
class  of  articles  as  to  be  calculated 
to  deceive  purchasers  using  ordi- 
nary caution."  Frothingham,  As- 
sistant Commissioner,  in  Ex  parte 
George  B.  Hurd  &  Co.,  59  Off.  Gaz. 
1763;  and  to  the  same  effect.  Ex 
parte  Coon,  58  Off.  Gaz.  946. 

28 — No  court  can  grant  registra- 
tion nor  direct  the  action  of  the 
commissioner  by  mandamus.  His 
duties  are  not  ministerial,  but  re- 
quire the  exercise  of  judgment  and 
discretion.        His    performance   of 


458 


APPENDIX  D. 


practice   of  courts   of  equity   of  the   United   States   in 
analogous  cases.-** 

§  4.  That  certificates  of  registry  of  trademarks  shall 
be  issued  in  the  name  of  the  United  States  of  America 
under  the  seal  of  the  Department  of  the  Interior,  and 
shall  be  signed  by  the  commissioner  of  patents,  and  a 
record  thereof,  together  with  printed  copies  of  the 
specifications,  shall  be  kept  in  books  for  that  purpose. 
CojDies  of  trademarks  and  of  statements  and  declara- 
tions filed  therewith,  and  certificates  of  registry  so  signed 
and  sealed,  shall  be  evidence  in  any  suit  in  which  such 
trademarks  shall  be  brought  in  controversy.^^ 


those  duties  will  not  be  reviewed 
on  or  controlled  by  mandamus. 
United  States  v.  Seymour,  66  Off. 
Gaz.  1167-1172,  153  U.  S.  353,  38 
L.  Ed.  742. 

29 — Under  this  provision  the 
commissioner  has  power  to  declare 
an  interference,  even  between  a 
partnership  and  one  of  its  mem- 
bers. If  the  applicant  shows  bet- 
ter title  he  will  be  admitted  to 
registration  notwithstanding  a  pri- 
or registry.  Yale  Mfg.  Co.  v.  Yale, 
SO  Off.  Gaz.  1183.  In  such  a  case 
the  burden  of  proof  to  establish 
priority  is  upon  the  applicant. 
Manitowoc  Mfg.  Co.  v.  Dickerman, 
57  Off.  Gaz.  1721.  In  cases  of  in- 
terference the  question  presented 
to  the  commissioner  is  substan- 
tially the  same  as  would  arise  in 
a  court  of  equity  if  either  of  the 
parties  were  seeking  to  enjoin  the 
other  from  the  use  of  the  mark. 
Ibid.  In  interferences  the  issue  is 
as  broad  as  the  broadest  claim.  S. 
Hernsheim  Bros.  &  Co.  (Ltd.)  v. 
J.  H.  Hargrave  &  Son,  81  Off.  Gaz. 
503;  Joseph  Banigan  Rubber  Co. 
V.  Bloomingdale,  89  Off.  Gaz.  1670. 
By  section  9  of  the  act  establish- 
ing the  court  of  appeals  of  the 
District  of  Columbia  that  court  is 


given  the  determination  of  ap- 
appeals  from  the  decision  of  the 
commissioner  of  patents  "in  any 
interference  case."  That  court  has 
held  that  this  clause  does  not  re- 
fer to  or  include  trademark  inter- 
ferences. Einstein  v.  Sawhill,  65 
Off.  Gaz.  1918.  An  applicant  pre- 
sented for  registration  a  mark  sub- 
stantially the  same  as  one  regis- 
tered by  another  under  the  act  of 
1870,  which  had  not  been  re-regis- 
tered under  the  act  of  1881.  Reg- 
istration was  refused  by  the  ex- 
aminer. The  applicant  then 
sought  to  institute  an  interfer- 
ence; this  was  refused  because 
the  former  registration  was  void. 
Under  all  the  facts  the  commis- 
sioner notified  the  registrant  un- 
der the  act  of  1870  that  an  appli- 
cation for  registry  was  pending 
with  which  his  registry  would  in- 
terfere if  it  were  a  registry  under 
the  act  of  1881,  and  that  sixty 
days  would  be  allowed  wherein 
the  former  registrant  might  make 
an  application  under  the  act  of 
1881  with  a  view  to  interference. 
Ex  parte  American  Lead  Pencil 
Co.,  61  Off.  Gaz.  131. 

30 — The  decision  of  the  commis- 
sioner of  patents    upon    interfer- 


TRADEM.VRK  ACT  OF  MARCH  3,  1881. 


459 


§  5.  That  a  certificate  of  registry  shall  remain  in  force 
for  thirty  years  from  its  date,  except  in  cases  where 
tlie  trademark  is  claimed  for  and  applied  to  articles  not 
manufactured  in  this  country,  and  in  which  it  receives 
protection  under  the  laws  of  a  foreign  country  for  a 
shorter  period,  in  which  case  it  shall  cease  to  have  any 
force  in  this  country  by  virtue  of  this  act  at  the  time  that 
such  trademark  ceases  to  be  exclusive  property  else- 
where. At  any  time  during  tlie  six  months  i)rior  to  the 
expiration  of  thirty  years,  such  registration  may  be  re- 
newed on  the  same  terms  and  for  a  like  period.^^ 

§  6.  That  applicants  for  registration  under  this  act 
shall  be  credited  for  any  fee  or  part  of  a  fee  heretofore 
paid  into  the  treasury  of  the  United  States  with  intent 
to  procure  protection  for  the  same  trademark.^^ 

§  7.  That  registration  of  a  trademark  shall  be  prima 
facie  evidence  of  ownership.^^     Any  i^erson  who  shall 


ence  proceedings  was  held  under 
the  act  of  1870  to  render  the 
issues  presented  to  hirn  res  adjudi- 
cata  and  they  cannot  be  reopened 
in  a  subsequent  proceeding  be- 
tween the  parties.  Hanford  v. 
Westcott,  Fed.  Case  No.  6,022,  16 
Off.  Gaz.  1181.  But  in  passing 
upon  the  same  question  under  the 
Act  of  1881  Judge  Adams  said,  of 
Hanford  v.  Westcott,  "If  the  rea- 
soning of  that  case  was  ever  per- 
suasive, it  cannot  be  considered 
so  in  the  light  of  the  changes  in 
the  law  since  it  was  rendered." 
A.  Leschen  &  Sons  Rope  Co.  v. 
Broderick  &  Bascom  Rope  Co.,  123 
Fed.  Rep.  149,  152. 

31— See  Act  of  1870,  sec.  78, 
ante. 

32 — The  fee  for  registration  un- 
der the  act  of  1881  was  required 
to  be  paid  upon  filing  the  appli- 
cation. 

The  sum  of  $10  paid  as  a  first 


fee  under  the  act  of  1870  was 
credited  upon  this  payment  on  ap- 
plications pending  in  the  Patent 
Office  when  the  act  of  1881  went 
into  effect. 

But  all  persons  to  whom  regis- 
tration was  granted  under  the  act 
of  1870  were  entitled  to  register 
under  this  act  without  additional 
charge.  Jacoby  &  Co.  v.  Lopez, 
23    Off.   Gaz.    342. 

33 — As  to  the  evidenciary  value 
of  the  certificate  of  registration, 
see  Elgin  National  Watch  Co.  v. 
Illinois  Watch  Case  Co.,  179  U.  S., 
665-672;  Brower  v.  Boulton,  7  C. 
C.  A.  567,  58  Fed.  Rep.  888;  United 
States  V.  Duell,  17  App.  Cas.  (D. 
C.)  478;  Glen  Cove  Mfg.  Co.  v. 
Ludeling,  22  Fed.  Rep.  824;  Hen- 
nessy  v.  Braunschweiger,  89  Fed. 
Rep.  664;  Welsbach  Light  Co.  v. 
Adam.  107  Fed.  Rep.  463.  That 
this  section  has  no  bearing  upon 
the  jurisdiction  of  a  state  court  in 
a  proceeding  under  a  state  statute 


460  APPENDIX  D. 

reproduce,  counterfeit,  copy  or  colorably  imitate  any 
trademark  registered  under  this  act,  and  affix  the  same 
to  merchandise  of  substantially  the  same  descriptive 
properties  as  those  described  in  the  registration,^^  shall 
be  liable  to  an  action  on  the  case  for  damages  for  the 
wrongful  use  of  said  trademark  at  the  suit  of  the  owner 
thereof;  and  the  party  aggrieved  shall  also  have  his 
remedy  according  to  the  course  of  equity  to  enjoin  the 
wrongful  use  of  such  trademark  used  in  foreign  com- 
merce or  commerce  with  Indian  tribes,  as  aforesaid,  and 
to  recover  compensation  therefor  in  any  court  having 
jurisdiction  over  the  person  guilty  of  such  wrongful  act; 
and  courts  of  the  United  States  shall  have  original  and 
appellate  jurisdiction  in  such  cases  without  regard  to  the 
amount  in  controversy.^^ 

§  8.  That  no  action  or  suit  shall  be  maintained  under 
the  provisions  of  this  act  in  any  case  when  the  trade- 
mark is  used  in  any  unlawful  business,  or  upon  any  arti- 
cle injurious  in  itself,  or  which  mark  has  been  used  with 
the  design  of  deceiving  the  public  in  the  purchase  of 

see    People    v.    Molins,    10   N.  Y.  this  section.    Postal  Tel.  Cable  Co. 

Supp.  130.  V.   Netter,  102   Fed.   Rep.   691. 

Thus  the  registration  of  a  mark  35 — Registration  of  a  mark  com- 

by  another  throws  the  burden  of  mon  to  the  trade  does  not  confer 

proving   priority    upon    one    who  an     exclusive    right     to     its     use. 

subsequently   applies   for   registra-  Stachelberg   v.    Ponce,    128    U.     S. 

tiou  for  the  same  mark.     Manito-  686.      Registration"  of    a    mark    is 

woe  Mfg.  Co.  V.  Dickerman,  57  Off.  not  conclusive.  Its  use  may  be  re- 

Gaz.    1720.      See   act  of   1870,   sec.  strained    at   the    suit   of   one   who 

78,    79;    ante.  has  a  prior  right  to  its  use.     Glen 

34 — As  to  what  is  "merchandise  Cove  Mfg.  Co.  v.  Ludeling,  22  Fed. 

of  substantially  the  same  descrip-  Rep.     824,     826;      Schumacher     v. 

tive     properties,"     see     Air-Brush  Schwenke    (2),    36    Off.    Gaz.    457; 

Mfg.  Co.  V.  Thayer,  84  Fed.  Rep.  Hennessy    v.    Braunschweiger,    89 

€40;      Bass,     Ratcliff     &     Gretton  Fed.  Rep.  664. 

(Ltd.)  V.  Feigenspan,  96  Fed.  Rep.  The  registrant  will  not  be  pro- 

206.  tected  in  the  use  of  his  trademark 

Blanks  and  envelopes  used  by  a  if  it  is  found  to  contain  a  material 

telegraph  company  are  not  "mer-  false    representation.      Seabury    v. 

chandise"   within  the  meaning  of  Grosvenor,  14   Blatchf.    262. 

Jurisdictional     amount.  —  The 


TR.VDEMARK  ACT  OF  MAKCII  3,  1881.  461 

merchandise,  or  under  any  certificate  of  registry  fraudu- 
lently obtained.'^'' 

§9.  That  any  person  who  f-:liall  procure  the  registi-y 
of  a  trademark,  or  of  himself  as  the  owner  of  a  trade- 
mark, or  an  entry  res]Tecting  a  trademark,  in  the  office 
of  the  commissioner  of  i)atents,  by  a  false  or  fraudulent 
representation  or  declaration,  orally  or  in  writing,  or  by 
any  fraudulent  means,  shall  be  liable  to  pay  any  dam- 
age sustained  in  consequence  thereof  to  the  injured 
l)arty,  to  be  recovered  in  an  action  on  the  case.^^ 

S 10.  That  nothing  in  this  act  shall  prevent,  lessen, 
impeach  or  avoid  any  remedy  at  law  or  in  equity  which 
any  party  aggrieved  by  any  wrongful  use  of  any  trade- 
mark might  have  had  if  the  provisions  of  this  act  had 
not  been  passed.^^ 

§  11.  That  nothing  in  this  act  shall  be  construed  as 
unfavorably  alTecting  a  claim  to  a  trademark  after  the 
term  of  registration  shall  have  expired;  nor  to  give  cog- 
nizance to  any  court  of  the  United  States  in  an  action  or 
suit  between  citizens  of  the  same  state,  unless  the  trade- 
mark in  controversy  is  used  on  goods  intended  to  be 
transported  to  a  foreign  country,  or  in  lawful  commer- 
cial intercourse  with  an  Indian  tribe.-'^ 

amount  in  controversy  is  the  value  39 — See    Act    of    1870,    sec.    78, 

of     the     trademark.     Symonds     v.  ante. 

Greene,    28    Fed.    Rep.    834;     Hen-  Where  both  parties  are  citizens 

nessy  v.  Herrmann,  89  Fed.  Rep.  of  the  same   state  the  averments 

669.  of  the  complaint  must  show  that 

36 — This  provision  is  merely  in  both    the    parties    are    using    the 

declaration    of    the    common    law.  mark    in    commerce    with    foreign 

See   act   of   1870,   sec.    84,   ante.  nations  or  with  the  Indian  tribes. 

37— See    act    of    1870,    sec.    82,  Ryder    v.    Holt,    128    U.    S.    525; 

ante.  Luyties  v.  Hollender   (1),  21  Fed. 

38— See  act    of    1870,    sec.    83,  Rep.    281;     Schumacher     v.     Sch- 

ante.    "The   present   act   does   not  wenke,  26  Fed.  Rep.  818:   Luyties 

abridge  or  qualify  the  common-law  v.    Hollender    (2),    30    Fed.    Rep. 

right,  but  by  the  express  terra  of  632;    Gravely  v.   Gravely,   42    Fed. 

section    10    preserves     it     intact."  Rep.   265;    Prince's  Metallic  Paint 

Wallace,  J.,  in  LaCroix  v.  May,  15  Co.    v.    Prince    Mfg.    Co.,    53    Fed. 

Fed.  Rep.  236.  Rep.    493.      Such    an   averment   is 


462 


APPENDIX  D. 


§  12.  That  the  commissioner  of  patents  is  authorized 
to  make  rules  and  regulations  and  prescribe  forms  for 
the  transfer  of  the  right  to  use  trademarks  and  for 
recording  such  transfers  in  his  office.^" 

§  13.  That  citizens  and  residents  of  this  country  wish- 
ing the  protection  of  trademarks  in  any  foreign  country, 
the  laws  of  which  require  registration  here  as  a  condi- 
tion precedent  to  getting  such  protection  there,  may  reg- 
ister their  trademarks  for  that  purjoose  as  is  above 
allowed  to  foreigners,  and  have  certificate  thereof  from 
the  Patent  Office.^^ 


necessary  only  where  the  proceed- 
ing is  between  citizens  of  the 
same  state.  It  is  not  necessary 
where  the  complainant  is  an 
alien.  Hennessy  v.  Braunschwei- 
ger,    89   Fed.   Rep,    664. 

40— See  Act  of  1870,  sec.  81. 
This  section  provides  for  trans- 
fers only  being  registered.  An  in- 
strument affecting  the  use  of  a 
trade-mark,  but  not  amounting  to 
a  transfer  or  assignment  thereof, 
cannot  legally  be  registered  in  the 
Patent  Office.  Waukesha  Springs 
Co.  V.  Hygeia  Water  Co.,  63  Fed. 
Rep.    438-442. 


41 — "One  reading  the  section 
would  infer  that  foreigners  have 
been  allowed  under  the  preceding 
sections  some  privilege;  but  a 
careful  reading  of  the  act  fails 
to  disclose  that  a  foreigner  is  en- 
titled to  any  other  or  further 
rights  than  those  given  to  citi- 
zens of  the  United  States.  The 
phrase  'as  is  above  allowed  to  for- 
eigners' renders  the  section  mean- 
ingless." Duell,  Commissioner,  in 
Ex  parte  Buffalo  Pitts  Co.,  39 
Off.  Gaz.  2069. 


APPENDIX  E. 

ACT  OF  AUGUST  5,  1882. 

Be  it  enacted  by  the  Senate  and  House  of  Representa- 
tives of  the  United  States  of  America  in  Congress 
assembled: 

Tliat  nothing  contained  in  the  law  entitled  "An  act 
to  authorize  the  registration  of  trademarks  and  j^rotoct 
the  same,"  approved  March  third,  eighteen  hundred  and 
eighty-one,  shall  prevent  the  registry  of  any  lawful 
trademark  rightfully  used  by  the  applicant  in  foreign 
commerce  or  commerce  with  Indian  tribes  at  the  time  of 
the  passage  of  said  act.^ 

Approved  August  5,  1882. 

[1905.     Department  Circular  No.  40.     Division  of  Customs.] 
Tbeasuby  Department,  Office  of  the  Secretary, 

Washington,  March  21,  1905. 
To  Collectors  of  Customs  and  Others  Concerned: 

The  attention  of  officers  of  the  customs  and  others  is  invited  to  the 
following  provisions  of  section  27  of  the  act  approved  February  20, 
1905,  effective  April  1.  1905: 

"Section  27.  That  no  article  of  imported  merchandise  which  shall 
copy  or  simulate  the  name  of  any  domestic  manufacture,  or  manufac- 
turer or  trader,  or  of  any  manufacturer  or  trader  located  in  any  for- 
eign country  which,  by  treaty,  convention,  or  law  affords  similar  privi- 
leges to  citizens  of  the  United  States,  or  which  shall  copy  or  simulate 
a  trademark  registered  in  accordance  with  the  provisions  of  this  Act, 
or  shall  bear  a  name  or  mark  calculated  to  induce  the  public  to  believe 
that  the  article  is  manufactured  in  the  United  States,  or  that  it  is 
manufactured  in  any  foreign  country  or  locality  other  than  the  coun- 
try or  locality  in  which  it  is  in  fact  manufactured,  shall  be  admitted 
to  entry  at  any  custom-house  of  the  United  States;    and,  in  order  to 

1— This  act  applies  only  to  such  one  could  exclusively  appropriate 
marks  as  were  lawful  trademarks  a  surname  as  a  trademark.  There- 
prior  to  March  3,  1881,  and  only  fore  a  surname  cannot  be  regis- 
such  marks  can  be  admitted  to  tered  under  the  act  of  1881.  Ex 
registration.  Long  prior  to  1881  parte  Gale  Mfg.  Co.,  85  Off.  Gaz. 
it  had    been    established    that   no  1907. 

463 


464  APPENDIX  E. 

aid  the  officers  of  the  customs  in  enforcing  this  prohibition,  any  domes- 
tic manufacturer  or  trader,  and  any  foreign  manufacturer 
or  trader,  who  is  entitled  under  the  provisions  of  a  treaty, 
convention,  declaration,  or  agreement  between  the  United  States 
and  any  foreign  country  to  the  advantages  afforded  by  law  to 
citizens  of  the  United  States  in  respect  to  trademarks  and  commercial 
names,  may  require  his  name  and  residence,  and  the  name  of  the 
locality  in  which  his  goods  are  manufactured,  and  a  copy  of  the  cer- 
tificate of  registration  of  his  trademark,  issued  in  accordance  with  the 
provisions  of  this  Act,  to  be  recorded  in  books  which  shall  be  kept  for 
this  purpose  in  the  Department  of  the  Treasury,  under  such  regula- 
tions as  the  Secretary  of  the  Treasury  shall  prescribe,  and  may  furnish 
to  the  Department  fac-similes  of  his  name,  the  name  of  the  locality  in 
which  his  goods  are  manufactured,  or  of  his  registered  trademark; 
and  thereupon  the  Secretary  of  the  Treasury  shall  cause  one  or  more 
copies  of  the  same  to  be  transmitted  to  each  collector  or  other  proper 
officer  of  customs." 

The  provisions  of  this  section  give  to  manufacturers  and  traders 
located  in  foreign  countries,  which,  by  treaty  stipulations,  give  similar 
privileges  to  the  United  States,  the  same  advantages  as  are  given  to 
domestic  manufacturers  and  traders.  The  act  does  not  affect  names 
or  trademarks  heretofore  recorded  in  the  Treasury  Department,  and 
as  to  them  the  protection  so  far  as  concerns  prohibition  of  importation 
will  continue.  Nor  does  the  act  appear  to  make  it  compulsory  on  the 
part  of  domestic  manufacturers  or  traders,  or  foreign  manufacturers 
or  traders,  to  register  names  (not  trademarks)  with  the  Commissioner 
of  Patents,  in  order  to  prevent  illegal  importations. 

Domestic  manufacturers  and  traders,  and  foreign  manufacturers 
and  traders,  to  avail  themselves  of  the  privileges  of  the  act,  so  far 
as  concerns  trademarks,  are  required  to  register  their  trademarks  with 
the  Commissioner  of  Patents  before  the  Treasury  Department  can  act. 
Applications  for  recording  the  names  and  trademarks  in  this  De- 
partment under  section  27  will  state  the  name  of  the  owner,  his  resi- 
dence and  the  locality  in  which  his  goods  are  manufactured,  and  in 
the  case  of  trademarks  should  be  accompanied  with  a  certified  copy  of 
the  certificate  of  registration  of  his  trademark  issued  in  accordance 
with  the  provisions  of  the  act  and  the  names  o^  the  ports  to  which 
fac-similes  should  be  sent.  In  the  case  of  the  name  of  a  domestic  man- 
ufacture, manufacturer  or  trader  (not  registered  as  a  trademark  in 
the  Patent  Office)  the  application  must  be  accompanied  by  the  proper 
proof  of  ownership  and  proof  as  to  the  country  or  locality  in  which  the 
goods  are  manufactured,  which  must  consist  of  the  affidavit  of  the 
owner  or  one  of  the  owners,  certified  by  an  officer  entitled  to  adminis- 
ter oaths  and  having  a  seal. 

On  the  receipt  by  a  customs  officer  of  any  such  fac-similes,  with  in- 
formation from  the  Department  that  they  have  been  recorded  therein, 
he  will  properly  record  and  file  them  and  exercise  care  to  prevent  the 
entry  at  the  custom-bnuse  of  any  article  of  foreign  manufacture  copy- 
ing or  simulating  such  mark. 


ACT  OF  AUGUST  5,   1882.  4G5 

No  fees  are  charged  for  recording  trademarks  in  the  Treasury  De- 
partment and  custom-houses. 

A  sufficient  number  of  fac-slmlles  should  be  forwarded  to  enable 
the  Department  to  send  one  copy  to  each  port  named  in  the  application, 
with  ten  additional  copies  for  the  files  of  the  Department. 

Especial  attention  is  invited  to  the  provision  in  said  section  pro- 
hibiting the  entry  of  articles  "which  shall  bear  a  name  or  mark  calcu- 
lated to  induce  the  public  to  believe  that  the  article  is  manufactured 
in  the  United  States,  or  that  it  is  manufactured  in  any  foreign  coun- 
try or  locality  other  than  the  country  or  locality  in  which  it  is  in  fact 
manufactured,"  and  collectors  and  other  officers  of  the  customs  are 
instructed  to  use  due  diligence  to  prevent  violations  of  this  provision. 

The  provisions  of  the  act  also  apply  to  Porto  Rico,  the  Philippine 
Islands,  Hawaii,  and  any  other  territory  under  the  jurisdiction  and 
control  of  the  United  States.  Lesue  M.  Shaw, 

Secretary. 


3f 


APPENDIX  F. 

TKADEMAKK  PROVISION  OF  THE  TARIFF  AOT 

OF  1897. 

(30  Statutes  at  Large,  151.) 

Section  11  of  this  chapter  provides:  ''That  no  article 
of  imported  merchandise  which  shall  copy  or  simulate 
the  name  or  trademark  of  any  domestic  manufacture  or 
manufacturer,  or  which  shall  bear  a  name  or  mark,  which 
is  calculated  to  induce  the  public  to  believe  that  the 
article  is  manufactured  in  the  United  States,  shall  be 
admitted  to  entry  at  any  custom  house  of  the  United 
States.  And  in  order  to  aid  the  officers  of  the  customs 
in  enforcing  this  prohibition,  any  domestic  manufacturer 
who  has  adopted  trademarks  may  require  his  name  and 
residence  and  a  description  of  his  trademarks  to  be  re- 
corded in  a  book  which  shall  be  kept  for  that  purpose  in 
the  department  of  the  treasury,  under  such  regulations 
as  the  secretary  of  the  treasury  shall  prescribe,  and  may 
furnish  to  the  department  fac-similes  of  such  trade- 
marks ;  and  thereupon  the  secretary  of  the  treasury  shall 
cause  one  or  more  copies  of  the  same  to  be  transmitted 
to  each  collector  or  other  proper  officer  of  the  customs." 
(30  Stats,  at  Large,  p.  207.) 

In  this  connection  the  following  circular  has  been 
issued  by  the  treasury  department: 

[1897.     Department  Circular  No.  116.       Division  of  Customs.] 
Teeasuby  Department,  Office  of  the  Secretary, 

Washington,  D.  C,  August  3,  1897. 
To  Officers  of  the  Customs  and  Others: 

The  attention  of  officers  of  the  customs  and  others  is  invited  to  the 
following  provision  of  section  11  of  the  act  of  July  24,  1897:  [quoting 
above  section.] 

Applications  for  the  recording  of  names  or  trademarks  in  this  de- 

466 


TRADEMARK  PROVISION  OF  ACT  OF  1897.  467 

partment  will  state  the  name  and  residence  of  the  domestic  manufac- 
turer, and  furnish  a  description  of  the  mark  and  the  names  of  the 
ports  to  which  the  fac-similes  should  be  sent.  No  such  name  or  trade- 
mark will  be  received  unless  accompanied  by  the  proper  proof  of 
ownership  and  proof  that  the  owner  is  a  domestic  manufacturer, 
which  must  consist  of  the  affidavit  of  the  owner  or  one  of  the  owners, 
certified  by  a  notary  public,  or  other  officer  entitled  to  administer 
oaths,  and  having  a  seal. 

On  the  receipt  by  a  customs  oflScer  of  any  such  fac-similes,  with 
Information  from  the  department  that  they  have  been  recorded 
therein,  he  will  properly  record  and  file  them,  and  will  exercise  care 
to  prevent  the  entry  at  the  custom-house  of  any  article  of  foreign  man- 
ufacture copying  or  simulating  such  mark. 

No  fees  are  charged  for  recording  trademarks  in  the  department 
and  custom-houses. 

A  sufficient  number  of  fac-similes  should  be  forwarded  to  enable  the 
department  to  send  one  copy  to  each  port  named  in  the  application 
with  ten  additional  copies  for  the  files  of  the  department. 

Especial  attention  is  invited  to  the  provision  in  said  section  pro- 
hibiting the  entry  of  articles  "which  shall  bear  a  name  or  mark  which 
Is  calculated  to  induce  the  public  to  believe  that  the  article  is  manu- 
factured in  the  United  States,"  and  collectors  and  other  officers  of  the 
customs  are  instructed  to  use  due  diligence  to  prevent  violations  of 
this  provision. 

W.  B.  Howell, 

Assistant  Secretary. 

No  fees  are  charged  for  recording  trademarks  under 
this  section.  Applicants  must  state  the  name  and  resi- 
dence of  the  domestic  manufacturer  and  specify  the  ports 
to  which  fac-similes  are  to  be  sent.  Synopsis  Treasury 
Decisions,  1895,  p.  926;  Id.,  1896,  p.  70.  The  treasury 
department  cannot  determine  the  validity  of  a  trademark. 
Its  powers  are  limited  to  the  exclusion  of  articles  which 
copy  or  simulate  trademarks  filed  for  record  with  the 
department.    Synopsis  Treasun^  Decisions.  1895,  p.  929. 

Compare  sec.  6,  Tariff  Act  of  Aug.  27,  1894 ;  and  sec. 
7  of  the  Act  of  Oct.  1,  1890. 


APPENDIX  G. 

ACT  OF  FEBRUARY  20,  1905. 

An  act  to  authorize  the  registration  of  trademarks  used  in  commerce 
with  foreign  nations  or  among  the  several  States  or  with  Indian 
tribes,  and  to  protect  the  same. 

Be  it  enacted  by  the  Senate  and  House  of  Representa- 
tives of  the  United  States  of  America  in  Congress 
assembled: 

That  the  owner  of  a  trademark  used  in  commerce  with 
foreign  nations,  or  among  the  several  states,  or  with 
Indian  tribes,  provided  such  owner  shall  be  domiciled 
within  the  territory'  of  the  United  States,  or  resides  in 
or  is  located  in  any  foreign  country  which,  by  treaty, 
convention,  or  law,  affords  similar  privileges  to  the  citi- 
zens of  the  United  States,  may  obtain  registration  for 
such  trademark  by  complying  with  the  following  re- 
quirements: First,  by  filing  in  the  Patent  Office  an 
application  therefor,  in  writing,  addressed  to  the  Com- 
missioner of  Patents,  signed  by  the  applicant,  specifying 
his  name,  domicile,  location,  and  citizenship;  the  class 
of  merchandise  and  the  particular  description  of  goods 
comprised  in  such  class  to  which  the  trademark  is  ap- 
propriated; a  description  of  the  trademark  itself,  and 
a  statement  of  the  mode  in  which  the  same  is  applied 
and  affixed  to  goods,  and  the  length  of  time  during 
which  the  trademark  has  been  used.  With  this  state- 
ment shall  be  filed  a  drawing  of  the  trademark,  signed 
by  the  applicant,  or  his  attorney,  and  such  number  of 
specimens  of  the  trademark,  as  actually  used,  as  may  be 
required  by  the  Commissioner  of  Patents.  Second,  by 
paying  into  the  Treasury  of  the  United  States  the  sum 
of  ten  dollars,  and  otherwise  complying  with  the  require- 

468 


ACT    OF   FEBRUARY    20,    1905.  469 

merits  of  this  act  and  such  regulations  as  may  be  pre- 
scribed by  tlie  Commissioner  of  Patents. 

The  enactment  of  a  law  whose  provisions  should  extend  to  the 
owners  of  trademarks  used  in  interstate  eonnnerce  was  inspired 
hy  the  omission  of  such  a  provision  in  the  Act  of  1881.  Concern- 
ing  that  act,  Mr.  Chief  Justice  Fuller  has  said:  that,  "Obviously 
the  act  was  passed  in  view  of  the  decision  that  the  prior  act  was 
unconstitutional,  and  it  is,  therefore,  strictly  limited  to  lawful 
commerce  with  foreign  nations  and  with  Indian  tribes.  It  is 
only  the  trademark  used  in  such  commerce  that  is  admitted  to 
registration,  and  it  can  only  be  infringed  when  used  in  that 
commerce,  without  right,  by  another  than  its  owner.  "^ 

Section  1  of  the  Act  of  1881  was  substantially  identical  with 
the  above  section  in  other  respects,  except  that  the  above  sec- 
tion requires  specimens  of  the  trademark  as  actually  used  to 
be  filed,  and  reduces  the  government  fee  from  twenty-five  dol- 
lars to  ten  dollars. 


Sec.  2.  That  the  application  prescribed  in  the  forego- 
ing section,  in  order  to  create  any  right  whatever  in 
favor  of  the  party  filing  it,  must  be  accompanied  by  a 
written  declaration  verified  by  the  applicant,  or  by  a 
member  of  the  finn  or  an  officer  of  tlie  corporation  or 
association  applying,  to  the  effect  that  the  applicant 
believes  himself  or  the  firm,  corporation,  or  association 
in  whose  behalf  he  makes  the  application,  to  be  the 
owner  of  the  trademark  sought  to  be  registered,  and 
that  no  other  person,  firm,  corporation,  or  association, 
to  the  best  of  the  applicant's  knowledge  and  belief,  has 
the  right  to  such  use,  either  in  the  identical  form  or 
in  such  near  resemblance  thereto  as  might  be  calculated 
to  deceive;  that  such  trademark  is  used  in  commerce 
among  the  several  states,  or  with  foreign  nations,  or 
with  Indian  tribes,  and  that  the  description  and  draw- 
ing presented  truly  represent  the  trademark  sought  to 

1— Warner  v.  Searle  and  Hereth  Co.,  191  U.  S.  195,  204. 


470  APPENDIX  G. 

be  registered.  If  the  applicant  resides  or  is  located  in 
a  foreign  country,  the  statement  required  shall,  in  addi- 
tion to  the  foregoing,  set  forth  that  the  trademark  has 
been  registered  by  the  applicant,  or  that  an  application 
for  the  registration  thereof  has  been  filed  by  him  in  the 
foreign  country  in  which  he  resides  or  is  located,  and 
shall  give  the  date  of  such  registration,  or  the  applica- 
tion therefor,  as  the  case  may  be,  except  that  in  the 
application  in  such  cases  it  shall  not  be  necessary  to 
state  that  the  mark  has  been  used  in  commerce  with  the 
United  States  or  among  the  states  thereof.  The  verifi- 
cation required  by  this  section  may  be  made  before  any 
person  within  the  United  States  authorized  by  law  to 
administer  oaths,  or,  when  the  applicant  resides  in  a 
foreign  country,  before  any  minister,  charge  d'affaires, 
consul,  or  commercial  agent  holding  commission  under 
the  government  of  the  United  States,  or  before  any 
notary  public,  judge,  or  magistrate  having  an  official 
seal  and  authorized  to  administer  oaths  in  the  foreign 
country  in  which  the  applicant  may  be  whose  authority 
shall  be  proved  by  a  certificate  of  a  diplomatic  or  consu- 
lar of  the  United  States. 

This  section  embraces  the  matter  included  in  Section  2  of  the 
Act  of  1881,  with  additional  provisions  concerning  the  require- 
ments of  the  statements  to  be  made  by  a  resident  of  a  foreign 
country. 

Sec.  3.  That  every  applicant  for  registration  of  a 
trademark,  or  for  renewal  of  registration  of  a  trade- 
mark, who  is  not  domiciled  within  the  United  States, 
shall,  before  the  issuance  of  the  certificate  of  registra- 
tion, as  hereinafter  provided  for,  designate,  by  a  notice 
in  writing,  filed  in  the  Patent  Office,  some  person  resid- 
ing within  the  United  States  on  whom  process  or  notice 
of  proceedings  affecting  the  right  of  ownership  of  the 
trademark  of  which  such  applicant  may  claim  to  be  the 
owner,  brought  under  the  provisions  of  this  act.  or 
under  other  laws  of  the  United  States,  may  be  served. 


ACT   OF  FEBRUARY    20,    1905.  471 

•with  the  same  force  and  effect  as  if  served  upon  the 
applicant  or  registrant  in  person.  For  the  purposes  of 
this  act  it  shall  be  deemed  sufficient  to  sei-ve  such  notice 
upon  such  applicant,  registrant,  or  representative  by 
leaving  a  copy  of  such  process  or  notice  addressed  to 
him  at  the  last  address  of  which  the  Commissioner  of 
Patents  has  been  notified. 

This  section  is  new  and  made  desirable  by  the  provisions  of 
Section  2  providing  for  the  registration  of  marks  by  persons 
domiciled  in  foreign  countries.  In  the  manner  indicated,  ef- 
fective service  can  be  had  in  case  suit  is  instituted  involving 
the  mark  registered. 

Sec.  4.  That  an  application  for  registration  of  a  trade- 
mark filed  in  this  country  by  any  person  who  has  pre- 
viously regularly  filed  in  any  foreign  country  which, 
by  treaty,  convention,  or  law,  affords  similar  privileges 
to  citizens  of  the  United  States,  an  application  for  regis- 
tration of  the  same  trademark  shall  be  accorded  the 
same  force  and  effect  as  would  be  accorded  to  the  same 
application  if  filed  in  this  countr^^  on  the  date  on  which 
application  for  registration  of  the  same  trademark  was 
first  filed  in  such  foreign  countrj^ :  Provided,  That  such 
application  is  filed  in  this  country  within  four  months 
from  the  date  on  which  the  application  was  first  filed 
in  such  foreign  country:  And  provided,  That  certificate 
of  registration  shall  not  be  issued  for  any  mark  for 
registration  of  which  application  has  been  filed  by  an 
applicant  located  in  a  foreign  country  until  such  mark 
has  been  actually  registered  by  the  applicant  in  the 
country  in  which  he  is  located. 

This  section  is  new  in  the  present  act,  and  is  intended  for 
the  protection  of  applicants  who  have  previously  filed  an  ap- 
pHcation  for  registration  in  a  foreign  country  wherein  reciprocal 
privileges  are  extended  to  citizens  of  the  United  States.  Its 
provisions  are  in  furtherance  of  Article  4  of  the  International 
Convention,  which  see. 


472  APPENDIX  G. 

Sec.  5.  That  no  mark  by  which  the  goods  of  the 
owner  of  the  mark  may  be  distinguished  from  other 
goods  of  the  same  class  shall  be  refused  registration  as 
a  trademark  on  account  of  the  nature  of  such  mark 
unless  such  mark— 

(a)  Consists  of  or  comprises  immoral  or  scandalous 
matter ; 

(b)  Consists  of  or  comprises  the  flag  or  coat  of  arms 
or  other  insignia  of  the  United  States,  or  any  simulation 
thereof,  or  of  any  state  or  municipality,  or  of  any  for- 
eign nation:  Provided,  That  trademarks  which  are 
identical  with  a  registered  or  known  trademark  owned 
and  in  use  by  another,  and  appropriated  to  merchandise 
of  the  same  descriptive  properties,  or  which  so  nearly 
resemble  a  registered  or  known  trademark  owned  and  in 
use  by  another,  and  appropriated  to  merchandise  of  the 
same  descriptive  properties,  as  to  be  likely  to  cause 
confusion  or  mistake  in  the  mind  of  the  public,  or  to 
deceive  purchasers,  shall  not  be  registered:  Provided, 
Tliat  no  mark  which  consists  merely  in  the  name  of  an 
individual,  firm,  corporation,  or  association,  not  written, 
printed,  impressed,  or  woven  in  some  particular  or  dis- 
tinctive manner  or  in  association  with  a  portrait  of  the 
individual,  or  merely  in  words  or  devices  which  are 
descriptive  of  the  goods  with  which  they  are  used,  or  of 
the  character  or  quality  of  such  goods,  or  merely  a 
geographical  name  or  term,  shall  be  registered  under 
the  terms  of  this  act:  Provided  further,  That  no  por- 
trait of  a  living  individual  may  be  registered  as  a 
trademark,  except  by  the  consent  of  such  individual, 
evidenced  by  an  instrument  in  writing:  And  provided 
further.  That  nothing  herein  shall  prevent  the  registra- 
tion of  any  mark  used  by  the  applicant  or  his  predeces- 
sors, or  by  those  from  whom  title  to  the  mark  is  derived, 
in  commerce  with  foreign  nations  or  among  the  several 
states,  or  with  Indian  tribes,  which  was  in  actual  and 
exclusive  use  as  a  trademark  of  the  applicant  or  his  pre- 


ACT    OF   FEBRUARY    20,    1905.  473 

decessors  from  wlioni  be  derived  title  for  ten  years  next 
preceding  the  passage  of  this  act. 

This  section  embraces  some  of  the  provisions  of  Section  3  of 
the  Act  of  1881.  The  moaning  and  effect  of  the  last  proviso 
are  yet  to  be  determined.  Read  according^  to  its  terms,  it  admits 
to  registration  any  mark  in  use  by  the  applicant  or  its  pred- 
ecessors for  ten  years  next  preceding  the  passage  of  the  act, 
regardless  of  whether  such  mark  comprises  immoral  or  scandal- 
ous matter,  the  flag  or  coat  of  arms  of  the  United  States,  or 
the  portrait  of  a  living  individual ;  without  regard  as  to  whether 
or  not  such  old  mark  is  identical  with  or  in  near  resemblance  to 
the  registered  or  kno-WTi  trademark  of  another,  and  even  where 
the  mark  consists  merely  in  the  name  of  an  individual,  etc., 
without  any  particular  or  descriptive  type  or  association. 

What  benefit  could  possibly  accrue  from  admitting  a  mark 
to  registration  which  is  not  a  trademark  at  common  law,  it  is 
left  to  the  courts  to  decide. 


Sec.  6.  That  on  the  filing  of  an  application  for  regis- 
tration of  a  trademark  which  complies  with  the  require- 
ments of  this  act,  and  the  payment  of  the  fees  herein 
provided  for,  the  Commissioner  of  Patents  shall  cause 
an  examination  thereof  to  be  made;  and  if  on  such  ex- 
amination it  shall  appear  that  the  applicant  is  entitled 
to  have  bis  trademark  registered  under  the  provisions 
of  this  act,  the  commissioner  shall  cause  the  mark  to  be 
published  at  least  once  in  the  Official  Gazette  of  the  Pat- 
ent Office.  Any  person  who  believes  he  would  be  dam- 
aged by  the  registration  of  a  mark  may  opjwse  the 
same  by  filing  notice  of  opposition,  stating  the  grounds 
therefor,  in  the  Patent  Office  within  thirty  days  after 
the  publication  of  the  mark  sought  to  be  registered, 
which  said  notice  of  opposition  shall  be  verified  by  the 
person  filing  the  same  before  one  of  the  officers  men- 
tioned in  Section  2  of  this  act.  If  no  notice  of  opix)- 
sition  is  filed  within  said  time  the  commissioner  shall 


474  APPENDIX  G. 

issue  a  certificate  of  registration  therefor,  as  herein- 
after provided  for.  If  on  examination  an  application 
is  refused,  the  commissioner  shall  notify  the  applicant, 
giving  him  his  reasons  therefor. 

The  provisions  of  this  section  for  publication  and  opposi- 
tion are  among:  the  most  valuable  features  of  the  present  act. 
Owners  of  trademarks  not  desiring-  to  register  are  thus  en- 
abled, by  proper  and  vigilant  action,  to  prevent  registration 
of  an  identical  or  similar  mark  by  another. 

Sec.  7.  That  in  all  cases  where  notice  of  opposition 
has  been  filed  the  Commissioner  of  Patents  shall  notify 
the  applicant  thereof  and  the  grounds  therefor. 

Whenever  application  is  made  for  the  registration  of 
a  trademark  which  is  substantially  identical  with  a 
trademark  appropriated  to  goods  of  the  same  descrip- 
tive properties,  for  which  a  certificate  of  registration 
has  been  previously  issued  to  another,  or  for  registra- 
tion of  which  another  has  previously  made  application, 
or  which  so  nearly  resembles  such  trademark,  or  a 
known  trademark  owned  and  used  by  another,  as,  in  the 
opinion  of  the  commissioner,  to  be  likely  to  be  mis- 
taken therefor  by  the  public,  he  may  declare  that  an 
interference  exists  as  to  such  trademark,  and  in  every 
case  of  interference  or  opposition  to  registration  he 
shall  direct  the  examiner  in  charge  of  interferences  to 
determine  the  question  of  the  right  of  registration  to 
such  trademark,  and  of  the  sufficiency  of  objections  to 
registration,  in  such  manner  and  upon  such  notice  to 
those  interested  as  the  commissioner  may  by  rules  pre- 
scribe. 

The  commissioner  may  refuse  to  register  the  mark 
against  the  registration  of  which  objection  is  filed,  or 
may  refuse  to  register  both  of  two  interfering  marks, 
or  may  register  the  mark,  as  a  trademark,  for  the  per- 
son first  to  adopt  and  use  the  mark,  if  otherwise  entitled 
to  register  the  same  unless  an  appeal  is  taken,  as  herein- 


ACT    OF   FEBRUARY    20,    1905.  475 

after  provided  for,  from  his  decision,  by  a  party  inter- 
ested in  the  proceeding,  witliin  such  time  (not  less  than 
twenty  days)  as  the  commissioner  may  prescribe. 

As  to  oppositions,  this  section  is  supplemental  to  Section  6. 
This  section  further  provides  for  the  creation  of  interfering^ 
proceedings,  which  have  formed  a  large  part  of  the  proceed- 
ings in  the  Patent  Office  under  the  Trademark  Act  of  1881  and 
the  patent  statutes.  It  further  provides  for  an  appeal  from 
the  decision  of  the  commissioner  in  cases  of  opposition  and  in- 
terference. 

Sec.  8.  That  every  applicant  for  the  registration  of 
a  trademark,  or  for  the  renewal  of  the  registration  of 
a  trademark,  which  application  is.  refused,  or  a  party  to 
an  interference  against  whom  a  decision  has  been  ren- 
dered, or  a  party  who  has  filed  a  notice  of  opposition  as 
to  a  trademark,  may  appeal  from  the  decision  of  the 
examiner  in  charge  of  trademarks,  or  the  examiner  in 
charge  of  interferences,  as  the  case  may  be,  to  the  com- 
missioner in  person,  having  once  paid  the  fee  for  such 
appeal. 

This  section  relates  to  the  right  of  appeal  to  the  commissioner 
from  the  examiner  of  the  trademark  division  of  the  Patent  Office, 
or  the  examiner  in  charge  of  interferences.  It  is  modeled  on 
§  4909,  R.  S.  U.  S.,  relating  to  appeals  in  applications  for  let- 
ters patent. 

Sec.  9.  That  if  an  applicant  for  registration  of  a 
trademark,  or  a  party  to  an  interference  as  to  a  trade- 
mark, or  a  party  who  has  filed  opposition  to  the  regis- 
tration of  a  trademark,  or  party  to  an  application  for 
the  cancellation  of  the  registration  of  a  trademark,  is 
dissatisfied  with  the  decision  of  the  Commissioner  of 
Patents,  he  may  appeal  to  the  court  of  appeals  of  the 
District  of  Columbia,  on  complying  with  the  conditions 
required  in  case  of  an  appeal  from  the  decision  of  the 
commissioner  by  an  applicant  for  patent,  or  a  party  to 
an  interference  as  to  an  invention,  and  the  same  rules 


476  APPENDIX  G. 

of  practice  and  procedure  shall  govern  in  every  stage  of 
such  proceedings,  as  far  as  the  same  may  be  applicable. 

This  section,  for  the  first  time,  creates  the  right  of  appeal 
to  the  Court  of  Appeals  of  the  District  of  Columbia  from  the 
decision  of  the  commissioner  in  trademark  applications,  inter- 
ferences and  oppositions. 

Sec.  10.  That  every  registered  trademark,  and  every 
mark  for  the  registration  of  which  application  has  been 
made,  together  with  the  application  for  registration  of 
the  same,  shall  be  assignable  in  connection  with  the  good 
will  of  the  business  in  which  the  mark  is  used.  Such 
assignment  must  be  by  an  instrument  in  writing  and 
duly  acknowledged  according  to  the  laws  of  the  country 
or  state  in  which  the  same  is  executed;  any  such  assign- 
ment shall  be  void  as  against  any  subsequent  purchaser 
for  a  valuable  consideration,  without  notice,  unless  it  is 
recorded  in  the  Patent  Office  within  three  months  from 
date  thereof.  The  commissioner  shall  keep  a  record  of 
such  assignments. 

The  first  sentence  of  this  section  is  merely  a  declaration  of 
the  law  concerning  the  assignability  of  trademarks  as  it  has  been 
settled  by  the  courts.  The  remainder  of  the  section  relates  to 
the  formalities  attending  upon  the  execution  and  recording  of 
the  assignment  of  registered  marks. 

Sec.  11.  That  certificates  of  registration  of  trade- 
marks shall  be  issued  in  the  name  of  the  United  States 
of  America,  under  the  seal  of  the  Patent  Office,  and 
shall  be  signed  by  the  Commissioner  of  Patents,  and  a 
record  thereof,  together  with  printed  copies  of  the  draw- 
ing and  statement  of  the  applicant,  shall  be  kept  in 
books  for  that  purpose.  The  certificate  shall  state  the 
date  on  which  the  application  for  registration  was  re- 
ceived in  the  Patent  Office.  Certificates  of  registration 
of  trademarks  may  be  issued  to  the  assignee  of  the 
applicant,  but  the  assignment  must  first  be  entered  of 
record  in  the  Patent  Office. 


ACT    OF   FEBRUARY    20,    1905.  477 

Written  or  printed  copies  of  any  records,  books, 
papers,  or  drawings  relating  to  trademarks  belonging  to 
the  Patent  Office,  and  of  certificates  of  registration,  au- 
thenticated by  the  seal  of  the  Patent  Office  and  certified 
by  the  commissioner  thereof,  shall  be  evidence  in  all 
cases  wherein  the  originals  could  be  evidence;  and  any 
person  making  application  therefor  and  paying  the  fee 
required  by  law  shall  have  certified  copies  thereof. 

This  section  provides  for  the  formalities  attendant  upon  the 
issuance  of  certificates  of  registration,  and  to  the  issue  of  certi- 
fied copies  of  the  data  relating  to  trademarks  belonging  to  the 
Patent  Office,  and  of  certificates  of  registration. 

Sec.  12.  That  a  certificate  of  registration  shall  re- 
main in  force  for  twenty  years,  except  that  in  the  case 
of  trademarks  previously  registered  in  a  foreign  coun- 
try such  certificates  shall  cease  to  be  in  force  on  the 
day  on  which  the  trademark  ceases  to  be  jorotected  in 
such  foreign  country,  and  shall  in  no  case  remain  in 
force  more  than  twent}^  years,  unless  renewed.  Cer- 
tificates of  registration  may  be,  from  time  to  time,  re- 
newed for  like  periods  on  payment  of  the  renewal  fees 
required  by  this  act,  upon  request  of  the  registrant,  his 
legal  representatives,  or  transferees  of  record  in  the 
Patent  Office,  and  such  request  may  be  made  at  any  time 
not  more  than  six  months  prior  to  the  expiration  of 
the  period  for  which  the  certificates  of  registration  were 
issued  or  renewed.  Certificates  of  registration  in  force 
at  the  date  at  which  this  act  takes  effect  shall  remain 
in  force  for  the  period  for  which  they  were  issued,  but 
shall  be  renewable  on  the  same  conditions  and  for  the 
same  period  as  certificates  issued  under  the  provisions 
of  this  act,  and  when  so  renewed  shall  have  the  same 
force  and  effect  as  certificates  issued  under  this  act. 

Under  Section  5  of  the  Act  of  1881,  a  certificate  of  registra- 
tion remains  in  force  for  thirty  years  from  its  date.  That  period 
is  curtailed  by  the  above  section  to  twenty  years. 


478  APPENDIX  G. 

Sec.  13.  That  whenever  auy  person  shall  deem  him- 
self injured  by  the  registration  of  a  trademark  in  the 
Patent  Office  he  may  at  any  time  apply  to  the  Commis- 
sioner of  Patents  to  cancel  the  registration  thereof.  The 
commissioner  shall  refer  such  application  to  the  exam- 
iner in  charge  of  interferences,  who  is  empowered  to 
hear  and  determine  this  question  and  who  shall  give 
notice  thereof  to  the  registrant.  If  it  appear  after  a 
hearing  before  the  examiner  that  the  registrant  was  not 
entitled  to  the  use  of  the  mark  at  the  date  of  his  applica- 
tion for  registration  thereof,  or  that  the  mark  is  not 
used  by  the  registrant,  or  has  been  abandoned,  and  the 
examiner  shall  so  decide,  the  commissioner  shall  cancel 
the  registration.  Appeal  may  be  taken  to  the  commis- 
sioner in  person  from  the  decision  of  the  examiner  of 
interferences. 

This  is  a  provision  for  the  cancellation  of  a  registration 
wrongfully  secured. 

Sec.  14.  Tliat  the  following  shall  be  the  rates  for 
trademark  fees: 

On  filing  each  original  application  for  registration  of 
a  trademark,  ten  dollars :  Provided,  That  an  application 
for  registration  of  a  trademark  pending  at  the  date  of 
the  passage  of  this  act,  and  on  which  certificate  of  reg- 
istration shall  not  have  issued  at  such  date,  may,  at 
the  option  of  the  applicant,  be  proceeded  with  and  regis- 
tered under  the  provisions  of  this  act  without  the  pay- 
ment of  further  fee. 

On  filing  each  application  for  renewal  of  the  registra- 
tion of  a  trademark,  ten  dollars. 

On  filing  notice  of  opposition  to  the  registration  of  a 
trademark,  ten  dollars. 

On  an  appeal  from  the  examiner  in  charge  of  trade- 
marks to  the  Commissioner  of  Patents,  fifteen  dollars. 

On  an  appeal  from  the  decision  of  the  examiner  ill 
charge  of  interferences,  awarding  ownership  of  a  trade- 


ACT    OF   FEBRUARY    20,    1905.  479 

mark  or  canceling  the  registration  of  a  trademark,  to 
the  Commissioner  of  Patents,  fifteen  dollars. 

For  certified  and  uncertified  copies  of  certificates  of 
registration  and  other  pai)ers,  and  for  recording  trans- 
fers and  other  papers,  the  same  fees  as  reciuired  by  law 
for  such  copies  of  patents  and  for  recording  assignments 
and  other  papers  relating  to  patents. 

The  foregoing  provisions  as  to  fees  do  not  provide  for  the 
fee  to  be  paid  upon  an  application  to  cancel  registration,  al- 
though a  fee  is  fixed  for  the  appeal  from  the  decision  of  the 
examiner  of  interferences  in  such  cases. 

Sec.  15.  That  sections  forty-nine  hundred  and  thirty- 
five  and  forty-nine  hundred  and  thirty-six  of  the  Re- 
vised Statutes,  relating  to  the  payment  of  patent  fees 
and  to  the  repayment  of  fees  paid  by  mistake,  are 
hereby  made  applicable  to  trademark  fees. 

The  sections  of  the  Revised  Statutes  of  the  United  States, 
referred  to  in  the  above  section  are  as  follows: 

Section  4985. 

"Patent  fees  may  be  paid  to  the  Commissioner  of  Patents, 
or  to  the  Treasurer  or  any  of  the  assistant  treasurers  of  the 
United  States,  or  to  any  of  the  designated  depositaries,  na- 
tional banks,  or  receivers  of  public  money,  designated  by  the 
Secretary  of  the  Treasury  for  that  purpose;  and  such  officer 
shall  give  the  depositor  a  receipt  or  certificate  of  deposit  there- 
for. All  money  received  at  the  Patent  Office,  for  any  purpose, 
or  from  any  source  whatever,  shall  be  paid  into  the  treasury 
as  received,  without  any  deduction  whatever." 

Section  4936. 

"The  Treasurer  of  the  United  States  is  authorized  to  pay 
back  any  sum  or  sums  of  money  to  any  person  who  has  through 
mistake  paid  the  same  into  the  treasury,  or  to  any  receiver  or 
depositary,  to  the  credit  of  the  treasury,  as  for  fees  accruing 
at  the  Patent  Office,  upon  a  certificate  thereof  being  made  to 
the  Treasurer  bv  the  Commissioner  of  Patents." 


480  APPENDIX  G. 

Sec.  16.  That  the  registration  of  a  trademark  under 
the  provisions  of  this  act  shall  be  prima  facie  evidence 
of  ownership.  Any  person  who  shall,  without  the  con- 
sent of  the  owner  thereof,  reproduce,  counterfeit,  copy, 
or  colorably  imitate  any  such  trademark  and  affix  the 
same  to  merchandise  of  substantially  the  same  descrip- 
tive properties  as  those  set  forth  in  the  registration,  or 
to  labels,  signs,  prints,  packages,  wrappers,  or  recepta- 
cles intended  to  be  used  upon  or  in  connection  with  the 
sale  of  merchandise  of  substantially  the  same  descriptive 
properties  as  those  set  forth  in  such  registration,  and 
shall  use,  or  shall  have  used,  such  reproduction,  counter- 
feit, copy,  or  colorable  imitation  in  commerce  among  the 
several  states,  or  with  a  foreign  nation,  or  with  the 
Indian  tribes,  shall  be  liable  to  an  action  for  damages 
therefor  at  the  suit  of  the  owner  thereof;  and  whenever 
in  any  such  action  a  verdict  is  rendered  for  the  plain- 
tiff, the  court  may  enter  judgment  therein  for  any  sum 
above  the  amount  found  by  the  verdict  as  the  actual 
damages  according  to  the  circumstances  of  the  case, 
not  exceeding  three  times  the  amount  of  such  verdict, 
together  with  the  costs. 

This  section  substantially  embodies  the  provisions  of  Section 
7  of  the  Act  of  1881,  besides  providing  for  increasing  the  actual 
damages  found,  to  a  sum  not  exceeding  three  times  the  amount 
of  the  verdict. 

The  first  sentence  of  this  section  cannot  receive  from  the  court 
a  more  liberal  interpretation  than  was  given  to  the  same  sen- 
tence in  the  Act  of  1881 ;  and  as  to  that  provision  in  the  former 
act,  it  was  expressly  held  that  registration  could  not  serve  as 
the  foundation  for  preliminary  injunction.^ 

Obviously,  a  certificate  of  registration  may  be  introduced  in 
evidence  as  prima  facie  proof  of  ownership.  This  would  fol- 
low if  the  provision  were  not  expressed  in  the  act,  as  other- 
wise any  registration  act  would  be  idle. 

1 — ^A.    Leschen    Sons    Rope    Co.  v.  Broderick  &  Bascom  Rope  Com- 
pany,   123    Fed.    Rep.,    149,    152. 


ACT    OF   FEBRUARY    20,    1905.  481 

Sec.  17.  That  the  circuit  and  territorial  courts  of  the 
United  States  and  the  Supreme  Court  of  the  District  of 
Columbia  shall  have  original  jurisdiction,  and  the  cir- 
cuit courts  of  appeal  of  the  United  States  and  the  Court 
of  Appeals  of  the  District  of  Columbia  shall  have  appel- 
late jurisdiction  of  all  suits  at  law  or  in  equity  resi)ect- 
ing  trademarks  registered  in  accordance  with  the  provis- 
ions of  this  act,  arising  under  the  present  act,  without 
regard  to  the  amount  in  controversy. 

This  section  desif,niates  the  courts  haviii},'  original  and  ap- 
pellate jurisdiction  in  eases  involving  registered  trademarks. 
As  to  the  appellate  jurisdiction  in  trademark  cases  generally, 
see  ante.  §116,  title  "Appeals." 

Sec.  18.  That  writs  of  certiorari  may  be  granted  by 
the  Sui3reme  Court  of  the  United  States  for  the  review 
of  cases  arising  under  this  act  in  the  same  manner  as 
provided  for  patent  cases  by  the  act  creating  the  circuit 
court  of  ajDpeals. 

This  section  is  substantially  identical  with  the  corresponding 
section  of  the  judiciary  Act  of  1891,  §  6.  As  to  the  issuance 
of  the  writ  of  certiorari  by  the  supreme  court,  see  ante,  §  116, 
title  " Certiorari." 

Sec.  19.  That  the  several  courts  vested  with  jurisdic- 
tion of  cases  arising  under  the  present  act  shall  have 
power  to  grant  injunctions,  according  to  the  course  and 
principles  of  equity,  to  prevent  the  violation  of  any 
right  of  the  owner  of  a  trademark  registered  under  this 
act,  on  such  terms  as  the  court  may  deem  reasonable; 
and  upon  a  decree  being  rendered  in  any  such  case  for 
wrongful  use  of  a  trademark  the  complainant  shall  be 
entitled  to  recover,  in  addition  to  the  profits  to  be  ac- 
counted for  by  the  defendant,  the  damages  the  com- 
plainant has  sustained  thereby,  and  the  court  shall 
assess  the  same  or  cause  the  same  to  be  assessed  under 
its  direction.     The  court  shall  have  the  same  power  to 

31 


482  APPENDIX  G. 

increase  such  damages,  in  its  discretion,  as  is  given  by 
section  sixteen  of  this  act  for  increasing  damages  found 
by  verdict  in  actions  of  law ;  and  in  assessing  profits  the 
plaintiff  shall  be  required  to  prove  defendant's  sales 
only;  defendant  must  jDrove  all  elements  of  cost  which 
are  claimed. 

This  section  is  substantially  identical  in  its  provisions  with 
§  4921,  R.  S.  U.  S.,  relating  to  patent  cases,  with  the  addition  of 
providing  for  the  manner  of  assessing  profits.  See  ante,  §  116, 
title  ' '  Increase  of  Damages  in  Equity. ' ' 

Sec.  20.  That  in  any  case  involving  the  right  to  a 
trademark  registered  in  accordance  with  the  provisions 
of  this  act,  in  which  the  verdict  has  been  found  for  the 
plaintiff,  or  an  injunction  issued,  the  court  may  order 
that  all  labels,  signs,  prints,  packages,  wrappers,  or  re- 
ceptacles in  the  possession  of  the  defendant,  bearing  the 
trademark  of  the  plaintiff  or  complainant,  or  any  re- 
production, counterfeit,  copy,  or  colorable  imitation 
thereof,  shall  be  delivered  up  and  destroyed.  Any  in- 
junction that  may  be  granted  upon  hearing,  after  notice 
to  the  defendant,  to  prevent  the  violation  of  any  right 
of  the  owner  of  a  trademark  registered  in  accordance 
with  the  provisions  of  this  act,  by  any  circuit  court  of 
the  United  States,  or  by  a  judge  thereof,  may  be  served 
on  the  parties  against  whom  such  injunction  may  be 
granted  anywhere  in  the  United  States  where  they  may 
be  found,  and  shall  be  operative,  and  may  be  enforced 
by  proceedings  to  punish  for  contempt,  or  otherwise, 
by  the  court  by  which  such  injunction  was  granted,  or 
by  any  other  circuit  court  or  judge  thereof,  in  the 
United  States,  or  by  the  Supreme  Court  of  the  District 
of  Columbia,  or  a  judge  thereof.  The  said  courts,  or 
judges  thereof,  shall  have  jurisdiction  to  enforce  said 
injunction,  as  herein  provided,  as  fully  as  if  the  injunc- 
tion had  been  granted  by  the  circuit  court  in  which  it 
is   sought  to  be  enforced.     The  clerk  of  the  court  or 


ACT    OF   FEBRUARY    20,    1905.  483 

judge  granting  the  injunction  shall,  when  required  to 
do  so  by  the  court  before  which  ai)i)lication  to  enforce 
said  injunction  is  made,  transfer  without  delay  to  said 
court  a  certified  copy  of  all  the  papers  on  which  the  said 
injunction  was  granted  that  are  on  file  in  his  office. 

This  section  is  modeled  upon  §  4966,  R.  S.  U.  S.,  relating  to 
copyrights. 

Sec.  21.  That  no  action  or  suit  shall  be  maintained 
under  the  provisions  of  this  act  in  any  case  when  the 
trademark  is  used  in  unlawful  business,  or  upon  any 
article  injurious  in  itself,  or  which  mark  has  been  used 
with  the  design  of  deceiving  the  public  in  the  purchase 
of  merchandise,  or  has  been  abandoned,  or  upon  any 
certificate  of  registration  fraudulently  obtained. 

Except  as  to  the  provision  concerning  abandoned  trademarks, 
this  section  is  substantially  identical  with  §  8  of  the  Act  of  1881. 

Sec.  22.     That  whenever  there  are  interfering  regis- 
tered trademarks,  any  person  interested  in  any  one  of 
them  may  have  relief  against  the  interfering  registrant, 
and  all  persons  interested  under  him,  by  suit  in  equity 
against  the  said  registrant;  and  the  court,  on  notice  to 
adverse  parties  and  other  due  proceedings  had  accord- 
ing to  the  course  of  equity,  may  adjudge  and  declare 
either   of   the    registrations   void    in  whole   or   in   part 
according  to  the  interest  of  the  parties  in  the  trademark, 
and  may  order  the  certificate  of  registration  to  be  deliv- 
ered up  to  the  Commissioner  of  Patents  for  cancellation. 
This  section  is  new  and  extends  the  jurisdiction  of  courts  of 
original  jurisdiction  to  include  the  power  to  decree  the  can- 
cellation of  a  certificate  of  registration,  the  decree  to  be  car- 
ried into  effect  by  the  Commissioner  of  Patents. 

Sec.  23.  That  nothing  in  this  act  shall  prevent,  les- 
sen, imj^each,  or  avoid  any  remedy  at  law  or  in  equity 
which  any  party  aggrieved  by  any  wrongful  use  of  any 
trademark  might  have  had  if  the  provisions  of  this  act 
had  not  been  passed. 


484  APPENDIX  G. 

This  section  is  identical  with  §  10  of  the  Act  of  1881.  See 
notes  to  that  section,  ante. 

Sec.  2-4.  That  all  applications  for  registration  pend- 
ing in  the  office  of  the  Commissioner  of  Patents  at  the 
time  of  the  passage  of  this  act  may  be  amended  with  a 
view  to  bringing  them,  and  the  certificate  issued  upon 
such  applications,  under  its  provisions,  and  the  prosecu- 
tion of  such  applications  may  be  proceeded  with  under 
the  provisions  of  this  act. 

As  the  Act  of  1881  was  still  in  effect  at  the  time  when  the 
present  act  went  into  operation,  this  provision  was  intended  to 
give  pending  applications  the  benefit  of  the  new  act,  if  amended 
so  as  to  be  brought  within  its  terras. 

Sec.  25.  That  any  person  who  shall  procure  regis- 
tration of  a  trademark,  or  entry  thereof,  in  the  office  of 
the  Commissioner  of  Patents  by  a  false  or  fraudulent 
declaration  or  representation,  oral  or  in  writing,  or  by 
any  false  means,  shall  be  liable  to  pay  any  damges  sus- 
tained in  consequence  thereof  to  the  injured  party,  to  be 
recovered  by  an  action  on  the  case. 

This  section  is  reproduced  from  §  9  of  the  Act  of  1881. 

Sec.  26.  That  the  Commissioner  of  Patents  is  author- 
ized to  make  rules  and  regulations,  not  inconsistent  with 
law,  for  the  conduct  of  proceedings  in  reference  to  the 
registration  of  trademarks  provided  for  by  this  act. 

Pursuant  to  this  section,  the  Commissioner  of  Patents  has 
made  and  published  the  rules  and  forms  which  are  hereinafter 
set  forth. 

Sec.  27.  That  no  article  of  imported  merchandise 
which  shall  copy  or  simulate  the  name  of  any  domestic 
manufacture,  or  manufacturer  or  trader,  or  of  any 
manufacturer  or  trader  located  in  any  foreign  country 
which,  by  treaty,  convention,  or  law  affords  similar  priv- 
ileges to  citizens  of  the  United  States,  or  which  shall 
copy  or  simulate  a  trademark  registered  in  accordance 
with  the  provisions  of  this  act,  or  shall  bear  a  name  or 


ACT    OF   FEBRUARY    20,    1905.  485 

mark  calculated  to  induce  the  puljlic  to  believe  that  the 
article  is  manufactured  in  the  United  States,  or  that  it 
is  manufactured  in  any  foreign  country  or  locality  other 
than  the  country  or  locality  in  which  it  is  in  fact  manu- 
factured, shall  be  admitted  to  entry  at  any  custom-house 
of  the  United  States ;  and,  in  order  to  aid  the  officers  of 
the  customs  in  enforcing  this  ])rohibition,  any  domestic 
manufacturer  or  trader,  and  any  foreign  manufacturer 
or  trader,  who  is  entitled  under  the  provisions  of  a 
treaty,  convention,  declaration  or  agreement  between  the 
United  States  and  any  foreign  country  to  the  advantages 
afforded  by  law  to  citizens  of  the  United  States  in  respect 
to  trademarks  and  connnercial  names,  may  require  his 
name  and  residence,  and  the  name  of  the  locality  in 
which  his  goods  are  manufactured,  and  a  copy  of  the 
certificate  of  registration  of  his  trademark,  issued  in 
accordance  with  the  provisions  of  this  act,  to  be  re- 
corded in  books  which  shall  be  kept  for  this  purpose  in 
the  Department  of  the  Treasury,  under  such  regulations 
as  the  Secretary  of  the  Treasury  shall  prescribe,  and 
may  furnish  to  the  Department  fac-similes  of  his  name, 
the  name  of  the  locality  in  which  his  goods  are  manu- 
factured, or  of  his  registered  trademark;  and  thereupon 
the  Secretary  of  the  Treasury  shall  cause  one  or  more 
copies  of  the  same  to  be  transmitted  to  each  collector  or 
other  proper  officer  of  customs. 

This  section  is  substantially  identical  with  the  provisions  of 
§11  of  the  Act  of  July  24,  1897,  entitled,  ''An  Act  to  Provide 
Revenue  for  the  Government  and  to  Encourage  the  Industries 
of  the  United  States,"  the  provisions  of  that  act  being  extended 
in  order  to  give  manufacturers  domiciled  abroad  the  same  pro- 
tection as  is  given  to  manufacturers  located  within  the  United 
States. 

Sec.  28.  That  it  shall  be  the  duty  of  the  registrant 
to  give  notice  to  the  public  that  a  trademark  is  regis- 
tered, either  by  affixing  thereon  the  words  ''Registered 
in  U.  S.  Patent  Office,"  or  abbreviated  thus,  ''Reg.  U. 


486  APPENDIX  G. 

S.  Pat.  Off.,"  or  when,  from  the  character  or  size  of 
the  trademark,  or  from  its  manner  of  attachment  to  the 
article  to  which  it  is  appropriated,  this  can  not  be  done, 
then  by  affixing  a  label  containing  a  like  notice  to  the 
package  or  receptacle  wherein  the  article  or  articles 
are  inclosed;  and  in  any  suit  for  infringement  by  a 
party  failing  so  to  give  notice  of  registration  no  dam- 
ages shall  be  recovered,  except  on  proof  that  the  de- 
fendant was  duly  notified  of  infringement,  and  con- 
tinued the  same  after  such  notice. 

This  section  is  modeled  upon  the  corresponding  section  of 
the  Patent  Statutes,  §  4900,  R.  S.  U.  S.  See  ante,  §  97,  title, 
"The  Disadvantages  of  Registration." 

Sec.  29.  That  in  construing  this  Act  the  following 
rules  must  be  observed,  except  where  the  contrary  in- 
tent is  plainly  apparent  from  the  context  thereof:  The 
United  States  includes  and  embraces  all  territory  which 
is  under  the  jurisdiction  and  control  of  the  United 
States.  The  word  "States"  includes  and  embraces  the 
District  of  Columbia,  the  Territories  of  the  United 
States,  and  such  other  territory  as  shall  be  under  the 
.-jurisdiction  and  control  of  the  United  States.  The 
terms  *' person"  and  "owner,"  and  any  other  word  or 
term  used  to  designate  the  applicant  or  other  entitled 
to  a  benefit  or  privilege  or  rendered  liable  under  the 
provisions  of  this  Act,  include  a  firm,  corporation,  or 
association  as  well  as  a  natural  person.  The  term  "ap- 
plicant" and  "registrant"  embrace  the  successors  and 
assigns  of  such  applicant  or  registrant.  The  term 
"trademark"  includes  any  mark  which  is  entitled  to 
registration  under  the  terms  of  this  Act  and  whether 
registered  or  not,  and  a  trademark  shall  be  deemed  to 
be  "affixed"  to  an  article  when  it  is  placed  in  any  man- 
ner in  or  upon  either  the  article  itself  or  the  receptacle 
or  package  or  upon  the  envelope  or  other  thing  in,  by, 


ACT    OF  FEBRU.VEY    20,    1905.  487 

av   with   which    the    goods    are   packed    or    inclosed   or 
othei-wise  prepared  for  sale  or  distribution. 

This  section  is  new  with  the  present  Act.  It  is  a  collectioii 
of  definitions  made  for  the  purpose  of  preventing  repetition  in 
the  preceding  sections,  as  well  as  to  specifically  bring  the  own- 
ers of  marks  located  in  Porto  Rico,  the  Phibppines,  and  any 
other  territory  under  the  jurisdiction  and  control  of  the  United 
States  within  the  benefits  of  the  Act.  Each  of  such  territories 
is  defined  to  be  a  state  within  the  meaning  of  the  Act,  as  are 
also  the  Territories  of  the  United  States,  and  the  District  of 
Columbia. 

Sec.  30.  That  this  Act  shall  be  in  force  and  take 
effect  April  first,  nineteen  hundred  and  five.  All  Acts 
and  parts  of  Acts  inconsistent  with  this  Act  are  hereby 
repealed  except  so  far  as  the  same  may  apply  to  cer- 
tificates of  registration  issued  under  the  Act  of  Con- 
gress approved  March  third,  eighteen  hundred  and 
eighty-one,  entitled  "An  Act  to  authorize  the  registra- 
tion of  trademarks  and  protect  the  same,"  or  under  the 
Act  approved  August  fifth,  eighteen  hundred  and 
eighty-two,  entitled  ''An  Act  relating  to  the  registra- 
tion  of  trademarks." 

Approved,  Febnaary  20,  1905. 


488  APPENDIX  G. 


EULES    GOVEENING    THE    EEGISTEATION    OF 

TEADEMAEKS  UNDEE  THE  ACT  APPEOVED 

FEBEUAEY  20,   1905,   TO   TAKE  EFFECT 

APEIL   1,   1905. 

United  States  Patent  Office, 

Washington,  D.  C,  April  1,  1905. 
The  following  rules,  designed  to  be  in  strict  accord- 
ance witli  the  provisions  of  the  act  approved  February 
20,   1905,   for  the  registration  of  trademarks,  are  pub- 
lished  for  gratuitous   distribution. 

Applicants  for  registration  and  their  attorneys  are 
advised  that  their  business  will  be  facilitated  by  the  ob- 
servance of  the  forms  on  page  509,  et  seq. 

Frederick  I.  Allen, 

Commissioner  of  Patents. 

correspondence. 

1.  All  business  with  the  Office  should  be  transacted 
in  writing.  Unless  by  the  consent  of  all  parties,  the 
action  of  the  Office  will  be  based  exclusively  on  the 
written  record.  No  attention  will  be  paid  to  any  alleged 
oral  promise,  stipulation,  or  understanding  in  relation 
to  which  there  is  disagreement  or  doubt. 

2.  Apx)licants  and  attorneys  will  be  required  to  con- 
duct their  business  with  the  Office  with  decorum  and 
courtesy.  Papers  presented  in  violation  of  this  require- 
ment will  be  returned;  but  all  such  papers  will  first  be 
submitted  to  the  Commissioner,  and  only  be  returned 
by  his  direct  order. 

3.  All  letters  should  be  addressed  to  ''The  Commis- 
sioner of  Patents;"  and  all  remittances  by  money  order, 
check,  or  draft  should  be  to  his  order. 

4.  A  separate  letter  should,  in  every  case,  be  written 
in  relation  to  each  distinct  subject  of  inquiry  or  appli- 


ACT    OF    FEBRUARY    20,    1905.  489 

cation.  Complaints  against  the  examiner  in  charge  of 
trademarks,  assignments  for  record,  fees,  and  orders 
for  coi:)ies  or  abstracts  must  be  sent  to  the  Office  in 
separate  letters. 

5.  Letters  relating  to  pending  applications  should 
refer  to  the  name  of  the  applicant,  the  serial  number  of 
the  application,  and  the  date  of  filing.  Letters  relating 
to  registered  trademarks  should  refer  to  tlie  name  of 
the  registrant,  the  number  and  date  of  the  certificate, 
and  the  merchandise  to  which  the  trademark  is  applied. 

G.  The  personal  attendance  of  applicants  at  the 
Patent  Office  is  unnecessary.  Their  business  can  be 
transacted  by  correspondence. 

7.  "V^^ien  an  attorney  shall  have  filed  his  power  of 
attorney  duly  executed,  the  correspondence  will  be  held 
with  him. 

8.  A  double  correspondence  with  an  applicant  and 
his  attorney,  or  with  two  attorneys,  can  not  generally 
be  allowed. 

9.  The  Office  can  not  undertake  to  respond  to  in- 
quiries propounded  with  a  view  to  ascertain  whether 
certain  trademarks  have  been  registered,  or,  if  so,  to 
whom,  or  for  what  goods;  nor  can  it  give  advice  as  to 
the  nature  and  extent  of  the  protection  afforded  by  the 
law,  or  act  as  its  expounder,  except  as  questions  may 
arise   upon   applications   regularly  filed. 

10.  Express,  freight,  postage,  and  all  other  charges 
on  matter  sent  to  the  Patent  Office  must  be  prepaid  in 
full;  otherwise  it  will  not  be  received. 

ATTORNEYS. 

11.  An  applicant  or  an  assignee  of  the  entire  interest 
may  prosecute  his  own  case,  but  he  is  advised,  unless 
familiar  with  such  matters,  to  employ  a  competent  at- 
torney. The  Office  can  not  aid  in  the  selection  of  any 
attorney. 

A  register  of  attorneys  is  kept  in  this  Office,  on  which 


490  APPENDIX  G. 

Arill  be  entered  the  names  of  all  persons  entitled  to  rep- 
resent applicants  before  the  Patent  Office.  The  namea 
of  persons  in  the  following  classes  will,  upon  their  wiit- 
ten  request,  be  entered  on  this  register: 

(a)  Any  person  who,  on  June  18,  1897,  was  engaged 
as  attorney  or  agent  in  the  active  prosecution  of  appli- 
cations for  patent  before  this  Office,  or  had  been  so  en- 
gaged at  any  time  within  five  years  prior  thereto  and  is 
not  disbarred,  or  is  or  was  during  such  period  a  mem- 
ber of  a  firm  so  engaged  and  not  disbarred,  provided 
that  such  person  shall,  if  required,  furnish  information 
as  to  one  or  more  applications  for  patents  so  prosecuted 
by  him. 

(h)  Any  attorney  at  law  who  is  in  good  standing  in 
any  court  of  record  in  the  United  States  or  any  of  the 
States  or  Territories  thereof  and  shall  furnish  a  certifi- 
cate of  the  clerk  of  such  United  States,  State,  or  Terri- 
torial court,  duly  authenticated  under  the  seal  of  the 
court,  that  he  is  an  attorney  in  good  standing. 

(c)  Any  person  who  has  been  regularly  recognized  as 
an  attorney  or  agent  to  represent  claimants  before  the 
Department  of  the  Interior,  or  any  bureau  thereof,  and 
is  in  good  standing,  provided  that  such  person  shall 
furnish  a  statement  of  the  date  of  his  admission  to  prac- 
tice as  such  attorney  or  agent,  and  shall  further  show, 
if  required  by  the  Commissioner,  that  he  is  possessed 
of  the  necessary  qualifications  to  render  applicants  valu- 
able service,  and  is  otherwise  competent  to  advise  and 
assist  them  in  the  presentation  and  prosecution  of  their 
applications   before   the   Patent  Office. 

(d)  Any  person  not  an  attorney  at  law  who  shall  file 
a  certificate  from  a  judge  of  a  United  States,  State,  or 
Territorial  court,  duly  authenticated  under  the  seal  of 
the  court,  that  such  person  is  of  good  moral  character 
and  of  good  repute  and  possessed  of  the  necessary 
qualifications  to  enable  him  to  render  applicants  valua- 
ble service,  and  is  otherwise  competent  to  advise  and 


ACT    OF   FEBRUARY    20,    1905,  491 

assist  them  in  the  presentation  and  prosecution  of  their 
applications   before   tlie   Patent   Office. 

(e)  Any  firm  which,  on  June  18,  1897,  was  engaged  in 
the  active  prosecution,  as  attorneys  or  agents,  of  appli- 
cations for  patents  before  the  Patent  Office,  or  had  been 
so  engaged  at  any  time  witliin  five  years  prior  thereto, 
provided  such  firm  or  any  memljer  thereof  is  not  dis- 
barred, provided  the  names  of  the  individuals  composing 
the  firm  are  stated,  and  provided  also  that  such  finn 
shall,  if  required,  furnish  infoiTnation  as  to  one  or 
more  applications  prosecuted  before  the  Patent  Office 
by  them. 

(/)  Any  finn,  not  entitled  to  registration  under  the 
preceding  sections,  which  shall  show  that  the  individuals 
composing  the  firm  are  each  and  all  recognized  as 
patent  attorneys  or  agents,  or  are  each  and  all  entitled 
to  be  so  recognized  under  the  preceding  sections  of  this 
rule. 

The  Commissioner  may  demand  additional  proof  of 
qualifications,  and  reserves  the  right  to  decline  to  recog- 
nize any  attorney,  agent,  or  other  person  applying  for 
registration  under  this  rule. 

Any  person  or  firm,  not  registered  and  not  entitled  to 
be  recognized  under  this  i-ule  as  an  attorney  or  agent  to 
represent  applicants  generally,  may,  upon  a  showing  of 
circumstances  which  render  it  necessary  or  justifiable, 
be  recognized  by  the  Commissioner  to  prosecute  as  at- 
torney or  agent  any  certain  specified  application  or  ap- 
plications, but  this  limited  recognition  shall  not  extend 
further  than  the  application  or  applications  named. 

No  person,  not  registered,  as  above  provided,  will  be 
permitted  to  prosecute,  as  attorney,  applications  before 
the  Patent  Office. 

12.  Before  any  attorney,  original  or  associate,  will 
be  allowed  to  inspect  papers  or  take  action  of  any  kind 
his  power  of  attorney  must  be  filed.  General  powers 
given  by  a  principal  to  an  associate  can  not  be  consid- 


492  APPENDIX  G. 

ered.  In  each  application  the  written  authorization 
nmst  be  filed.  A  power  of  attorney  purporting  to  have 
been  given  to  a  firm  or  copartnership  will  not  be  recog- 
nized, either  in  favor  of  the  finn  or  of  any  of  its  mem- 
bers, unless  all  its  members  shall  be  named  in  such 
i:)ower  of  attorney. 

1.3.  Substitution  or  association  may  be  made  by  an 
attorney  ujion  the  written  authorization  of  his  principal; 
but  such  authorization  will  not  empower  the  second  at- 
torney to  appoint  a  third. 

14.  Powers  of  attorney  may  be  revoked  at  any  stage 
in  the  proceedings  of  a  case  upon  application  to  and 
approval  by  the  Commissioner;  and,  when  so  revoked, 
the  Office  will  communicate  directly  with  the  applicant, 
or  such  other  attorney  as  he  may  appoint.  An  attorney 
will  be  promptly  notified  by  the  docket  clerk  of  the 
revocation  of  his  power  of  attorney. 

15.  For  gross  misconduct,  the  Commissioner  may  re- 
fuse to  recognize  any  person  as  an  attorney,  either  gen- 
erally or  in  any  particular  case;  but  the  reasons  for 
such  refusal  will  be  duly  recorded  and  be  subject  to  the 
approval  of  the  Secretary  of  the  Interior. 

WHO    MAY    REGISTER    A   TRADEMARK. 

Act  of  Feb.  20,  1905,  sec.  1. 

16.  A  trademark  may  be  registered  by  any  person, 
firm,  corporation,  or  association  domiciled  within  the 
territory  of  the  United  States,  or  residing  in  or  located 
in  any  foreign  country  which,  by  treaty,  convention,  or 
law,  affords  similar  privileges  to  the  citizens  of  the 
United  States,  and  who  is  entitled  to  the  use  of  any 
trademark  and  uses  the  same  in  commerce  with  foreign 
nations,  or  among  the  several  States,  or  with  Indian 
tribes,  upon  payment  of  the  fee  required  by  law  and 
other  due  proceedings  had.     (See  rules  17  and  19.) 

Act  of  Feb.  20,  1905,  sees.  1,  2,  and  4. 

17.  No  trademark  will  be  registered  to  an  applicant 
residing   or  located   in   a   foreign   country  unless   such 


ACT    OF   FEBRU.VRY    20,    1905.  493 

countr}"  by  treaty,  convention,  or  law,  affords  similar 
privileges  to  the  citizens  of  the  United  States,  nor  un- 
less the  trademark  has  been  registered  by  the  applicant 
in  the  foreign  country  in  which  he  resides  or  is  located. 
In  such  cases  it  is  not  nocessaiy  to  state  in  the  applica- 
tion that  the  trademark  has  been  used  in  commerce  with 
the  United  States  or  among  the  States  thereof.  (See 
Rule  31.) 

WHAT   MAY   BE  REGISTERED   AS   A   TRADEMARK. 

Act  of  Feb.  20,  1905,  sees.  1,  5,  and  21. 

18.  No  trademark  will  be  registered  to  an  owner 
domiciled  within  the  territory  of  the  United  States  un- 
less it  shall  be  made  to  appear  that  the  same  is  used 
as  such  by  said  owner  in  commerce  among  the  several 
States,  or  between  the  United  States  and  some  foreigTi 
nation  or  Indian  tribe;  no  trademark  will  be  registered 
to  an  owner  residing  in  or  located  in  a  foreign  country 
unless  said  country  by  treaty,  convention,  or  law  affords 
similar  privileges  to  the  citizens  of  the  United  States; 
no  trademark  will  be  registered  which  consists  of  or 
comprises  immoral  or  scandalous  matter,  or  which  con- 
sists of  or  comprises  the  flag  or  coat  of  arms  or  other 
insignia  of  the  United  States,  or  any  simulation  there- 
of, or  of  any  State  or  municipality,  or  of  any  foreign 
nation,  or  which  is  identical  with  a  registered  or  known 
trademark  owned  and  in  use  by  another,  and  appropri- 
ated to  merchandise  of  the  same  descriptive  properties, 
or  which  so  nearly  resembles  a  registered  or  known 
trademark  owned  and  in  use  by  another,  and  appro- 
priated to  merchandise  of  the  same  descriptive  proper- 
ties, as  to  be  likely  to  cause  confusion  or  mistake  in  the 
mind  of  the  public,  or  to  deceive  purchasers;  or  which 
consists  merely  in  the  name  of  an  individual,  firm,  cor- 
poration, or  association,  not  written,  printed,  impressed, 
or  woven  in  some  particular  or  distinctive  manner  or  in 
association  with  a  portrait  of  the  individual,  or  merely 


494  APPENDIX  G. 

in  words  or  devices  wliieh  are  descriptive  of  the  goods 
with  which  they  are  used,  or  of  the  character  or  quality 
of  such  goods,  or  merely  a  geographical  name  or  term; 
no  portrait  of  a  living  individual  will  be  registered  as 
a  trademark,  except  by  the  consent  of  such  individual, 
evidenced  by  an  instrument  in  writing;  and  no  trade- 
mark will  be  registered  which  is  used  in  unlawful  busi- 
ness, or  upon  any  article  injurious  in  itself,  or  which 
has  been  used  with  the  design  of  deceiving  the  public  in 
the  purchase  of  merchandise,  or  which  has  been  aban- 
doned. 

Act  of  Feb.   20,  1905,  sec.  5. 

19.  Any  mark  used  in  commerce  with  foreign  nations 
or  among  the  several  States  or  with  Indian  tribes  may 
be  registered  if  it  has  been  in  actual  and  exclusive  use 
as  a  trademark  of  the  applicant  or  his  predecessors 
from  whom  he  derived  title  for  ten  years  next  preceding 
the  passage  of  the  act  of  February  20,  1905.  (See 
Rule  30.) 

THE    APPLICATION. 
Act  of  Feb.  20,  1905,  sec.  1. 

20.  An  application  for  the  registration  of  a  trade- 
mark must  be  made  to  the  Commissioner  of  Patents  and 
must  be  signed  by  the  applicant. 

Act  of  Feb.  20,  1905,  sec.  1. 

21.  A  complete  application  comprises: 

(a)  A  petition,  requesting  registration,  signed  by  the 
applicant.    (See  Form  1,  p.  509.) 

{h)  A  statement  specifying  the  name,  domicile,  loca- 
tion, and  citizenship  of  the  party  applying;  the  class  of 
merchandise,  and  the  particular  description  of  goods 
comprised  in  such  class,  to  which  the  trademark  is  ap- 
propriated; a  description  of  the  trademark  itself,  and 
a  statement  of  the  mode  in  which  the  same  is  applied 
and  aflfixed  to  the  goods,  and  of  the  length  of  time  dur- 


ACT    OF   FEBRU.VRY    20,    1905.  495 

ing  which  the  trademark  has  been  used,  and,  if  the  ap- 
plicant be  a  corporation  or  association,  it  must  be  set 
forth  under  the  laws  of  what  State  or  nation  organized. 
(See  sec.  29  of  the  statute,  and  Fonns  '2,  4,  and  6,  pp. 

509  et  seq.) 

(c)  A  declaration,  complying  with  section  2  of  the 
statute.     (See  Forms  3,  5,  7,  8,  and  9,  pp.  509  et  seq.) 

{(I)  A  drawing  of  the  trademark,  which  shall  be  a 
facsimile  of  the  same  as  actually  used  upon  the  goods. 
(See  Rules  34  and  35  and  Fonn  page  513.) 

(e)  Five  specimens  {or  facsimiles,  ithen,  from  the 
mode  of  applying  or  affixing  the  trademark  to  the  goods, 
specimens  can  not  he  furnished)  of  the  trademark  as 
actually  used  upon  the  goods. 

(/)   A  fee  of  ten  dollars. 

22.  The  petition,  the  statement,  and  the  declaration 
must  be  in  the  English  language  and  written  on  one 
side  of  the  paper  only. 

23.  The  name  of  the  applicant  will  appear  in  the 
certificate  of  registration  precisely  as  it  is  signed  to 
the  statement  of  the  application,  and,  therefore,  the  sig- 
nature to  the  statement  must  be  the  correct  signature  of 
the  applicant,  and  the  name  of  the  applicant  wherever  it 
appears  in  the  papers  of  the  application  must  agree 
with  the  name  as  signed  to  the  statement. 

24.  No  information  will  be  given  without  authority 
of  the  applicant  respecting  the  filing  of  an  application 
for  the  registration  of  a  trademark  by  any  i^erson,  or 
the  subject-matter  thereof,  unless  it  shall,  in  the  opin- 
ion of  the  Commissioner,  be  necessary  to  the  proi>er 
conduct  of  business  before  the  Office. 

Act  of  Feb.  20,  1905,  sees.  14  and  24. 

25.  All  applications  for  registration  pending  in  the 
Patent  Office  at  the  time  of  the  passage  of  the  act  of 
l'Ybniar>-  20,  1905,  may  be  amended  with  a  view  to 
bringing   them   and   the   certificates   issued  under   such 


496  APPENDIX  G. 

applications  under  the  provisions  of  said  act,  and  the 
prosecution  of  such  applications  may  be  proceeded  with 
under  its  provisions  without  the  payment  of  further  fee. 
When  such  an  application  is  amended  to  bring  it  under 
the  act  of  February  20,  1905,  it  will  be  given  a  serial 
number  and  date  of  filing  under  said  act. 

A  trademark  registered  under  the  act  of  March  3, 
1881,  may  be  registered  under  the  act  of  February  20, 
1905,  but  the  application  for  such  registration  will  be 
subject  to  examination  in  the  same  manner  as  other  ap- 
plications filed  under  said  act  of  February  20,  1905. 

Act  of  Feb.  20,  1905.  sec.  4. 

26.  An  application  for  registration  of  a  trademark, 
filed  in  this  country  by  any  person  who  has  previously 
regularly  filed  in  any  foreign  country  which,  by  treaty, 
convention,  or  law  atfords  similar  privileges  to  the 
citizens  of  the  United  States  an  application  for  regis- 
tration of  the  same  trademark,  shall  be  accorded  the 
same  force  and  effect  as  would  be  accorded  to  the  same 
application  if  filed  in  this  country  on  the  date  on  which 
application  for  registration  of  the  same  trademark  was 
first  filed  in  such  foreign  country:  Provided,  That  such 
application  is  filed  in  this  country  within  four  months 
from  the  date  on  which  the  application  was  first  filed  in 
such   foreign    country. 

Act  of  Feb.  20,  1905,  sec.  3. 

27.  Every  applicant  for  registration  of  a  trademark, 
or  for  renewal  of  registration  of  a  trademark,  who  is 
not  domiciled  within  the  United  States,  shall,  before  the 
issuance  of  the  certificate  of  registration,  designate,  by 
a  notice  in  writing,  filed  in  the  Patent  Office,  some  per- 
son residing  within  the  United  States  on  whom  process 
or  notice  of  proceedings  affecting  the  right  of  owner- 
ship of  the  trademark  of  which  such  applicant  may 
claim  to  be  the  owner  may  be  served.  This  notice  shall 
be  indorsed  upon  the  file  wrapper  of  the  application. 


ACT    OF   FEBRUARY    20,    1905.  497 

Act  of  Feb.  20,  1905,  sec.  3. 

28.  In  i:)roceedings  relating  to  an  application  or  a 
registration  under  the  act  of  Februaiy  20,  1905,  it  shall 
be  deemed  sufficient  to  serve  notice  ui)On  the  applicant, 
registrant,  or  representative  by  leaving  a  copy  of  the 
])rocess  or  notice  of  proceedings  addressed  to  him  at 
the  last  address  of  which  the  Commissioner  of  Patents 
has   been   notified. 

DECLARATION. 
Act  of  Feb.   20.  1905,  sec.  2. 

29.  The  application  must  be  accompanied  by  a  writ- 
ten declaration  verified  by  the  applicant,  or  by  a  mem- 
ber of  the  firm,  or  by  an  officer  of  the  corjioration  or 
association  applying,  to  the  effect  that  he  believes  him- 
self, or  the  firm,  corporation,  or  association  in  whose 
behalf  he  makes  the  declaration,  to  be  the  owner  of  the 
trademark  sought  to  be  registered,  and  that  no  other 
person,  finn,  corporation,  or  association,  to  the  best  of 
his  knowledge  and  belief,  has  the  right  to  use  the  trade- 
mark, either  in  the  identical  form  or  any  such  near  re- 
semblance thereto  as  might  be  calculated  to  deceive; 
that  such  trademark  is  used  in  commerce  among  the 
several  States,  or  with  foreign  nations,  or  with  Indian 
tribes,  and  that  the  description,  drawing,  and  specimens 
{or  facsimiles)  tnily  represent  the  trademark  sought  to 
be  registered.  (See  Eule  17  and  Forms  3,  5,  7,  8,  and 
9,  p.  509  et  seq.) 

30.  Where  application  is  made  under  section  5  of 
the  act  of  February  20,  1905,  on  the  ground  that  the 
mark  has  been  in  actual  and  exclusive  use  as  a  trade- 
mark by  the  applicant,  or  his  predecessors  from  whom 
he  derived  title,  for  ten  years  next  preceding  the  pas- 
sage of  said  act,  the  applicant  shall,  in  addition  to  the 
requirements  of  section  2  of  said  act,  make  oath  to  such 
actual  use  of  the  mark  as  a  trademark  by  himself,  or  his 
l)redecessors,  or  by  those  from  whom  title  to  the  same  is 
derived,  for  the  period  specified,  and  that,  to  the  best  of 

32 


498  APPENDIX  G. 

his  knowledge  and  belief,  such  use  has  been  exclusive. 
(See  Form  8,  page  511.) 

Act  of  Feb.   20,  1905,  sec.  *?. 

31.  If  the  applicant  resides  or  is  located  in  a  foreign 
country,  the  declaration  required  shall  also  set  forth 
that  the  trademark  has  been  registered  by  the  applicant, 
or  that  an  application  for  the  registration  thereof  has 
been  filed  by  him  in  the  foreign  country  in  which  he 
resides  or  is  located,  and  shall  give  the  date  of  such 
registration  or  of  the  application  therefor,  as  the  case 
may  be.  In  such  cases,  it  shall  not  be  necessary  to  state 
that  the  mark  has  been  used  in  commerce  with  the 
United  States  or  among  the  States  thereof.  (See  Form 
9,  page  512.) 

Act  of  Feb.   20,  1905,  sec.  2. 

32.  The  declaration  may  be  made  before  any  person 
within  the  United  States  authorized  by  law  to  admin- 
ister oaths,  or,  when  the  applicant  resides  in  a  foreign 
country,  before  any  minister,  charge  d'affaires,  consul, 
or  commercial  agent  holding  commission  under  the  Gov- 
ernment of  the  United  States,  or  before  any  notary  pub- 
lic, judge,  or  magistrate  having  an  official  seal  and 
authorized  to  administer  oaths  in  the  foreign  country  in 
which  the  applicant  may  be,  whose  authority  shall  be 
proved  by  the  certificate  of  a  diplomatic  or  consular 
officer  of  the  United  States,  the  declaration  being  at- 
tested in  all  cases,  in  this  and  other  countries,  by  the 
proper  official  seal  of  the  officer  before  whom  the  same 
is  made. 

33.  Amendment  of  the  declaration  will  not  be  per- 
mitted. If  that  filed  with  the  application  be  faulty  or 
defective,  a  substitute  declaration  must  be  filed. 

DRAWING. 

34.  (1)  The  drawing  must  be  made  upon  pure  white 
paper  of  a  thickness  corresponding  to  two-sheet  Bristol 


I 


ACT  OF  FEBRUARY   20,   1905.  499 

board.  The  surface  of  the  paper  must  be  calendered 
and  smooth.  India  ink  alone  must  be  used,  to  secure 
perfectly  black  and  solid  lines. 

(2)  The  size  of  a  sheet  on  which  a  drawing  is  made 
must  be  exactly  10  by  15  inches.  One  inch  from  its 
edges,  a  single  marginal  line  is  to  be  drawn,  leaving  the 
''sight"  precisely  8  by  13  inches.  Within  this  margin 
all  work  and  signatures  must  be  included.  One  of  the 
shorter  sides  of  the  sheet  is  regarded  as  its  top,  and, 
measuring  downwardly  from  the  marginal  line,  a  space 
of  not  less  than  V/^  inches  is  to  be  left  blank  for  the 
heading  of  title,  name,  number,  and  date.  (See  speci- 
men of  drawing  page  513.) 

(3)  All  drawings  must  be  made  with  the  pen  only. 
Every  line  and  letter,  signatures  included,  must  be  ab- 
solutely blaek.  This  direction  applies  to  all  lines,  how- 
ever fine,  and  to  shading.  All  lines  must  be  clean, 
sharp,  and  solid,  and  they  must  not  be  too  fine  or 
crowded.     Surface  shading,  when  used,  should  be  open. 

Act  of  Feb.   20,   1905,  sec.   1. 

(4)  The  name  of  the  proprietor  of  the  trademark, 
signed  by  himself  or  his  attorney  of  record,  must  be 
placed  at  the  lower  right-hand  comer  of  the  sheet 
within  the  marginal  lines,  but  in  no  instance  should  it 
encroach  upon  the  drawing. 

(5)  When  the  view  is  longer  than  the  width  of  the 
sheet,  the  sheet  should  be  turned  on  its  side,  and  the 
heading  should  be  placed  at  the  right  and  the  signature 
at  the  left,  occupying  the  same  space  and  position  as  in 
an  upright  view,  and  being  horizontal  when  the  sheet  is 
held   in   an  upright   position. 

(6)  Drawings  transmitted  to  the  Office  should  be  sent 
flat,  protected  by  a  sheet  of  heavy  binder's  board.  They 
should  not  be  rolled  or  folded. 

(7)  An  agent's  or  attorney's  stamp,  or  advertisement, 
or  written  address  will  not  be  }:>ermitted  upon  the  face 
of  a  drawing,  within  or  without  the  marginal  line. 


500  APPENDIX  G. 

35.  The  Office,  at  the  request  of  applicants,  will  fur- 
nish the  drawings  at  cost. 

EXAMINATION    OF    APPLICATIONS. 

Act  of  Feb.  20,  1905,  sec.  6. 

36.  All  complete  applications  for  registration  are 
considered,  in  the  first  instance,  by  the  examiner  in 
charge  of  trademarks.  AVhenever,  on  examination  of 
an  ai:)plication,  registration  is  refused  for  any  reason 
whatever,  the  applicant  will  be  notified  thereof.  The 
reasons  for  such  refusal  will  be  stated,  and  such  in- 
formation and  references  will  be  given  as  may  be  useful 
in  aiding  the  applicant  to  judge  of  the  propriety  of  fur- 
ther prosecuting  his  application. 

37.  The  examination  of  an  application  and  the  action 
thereon  will  be  directed  throughout  to  the  merits,  but 
in  each  letter  the  examiner  shall  state  or  refer  to  all 
his  objections. 

Act  of  Feb.  20,  1905,  sec.  6. 

38.  If,  on  examination  of  an  application  for  the 
registration  of  a  trademark,  it  shall  appear  that  the 
applicant  is  entitled  to  have  his  trademark  registered 
under  the  provisions  of  the  law,  the  mark  will  be  pub- 
lished in  the  Official  Gazette  at  least  once.  Such  publi- 
cation shall  be  at  least  thirty  days  prior  to  the  date  of 
registration. 

If  no  notice  of  opposition  be  filed  within  thirty  days 
after  such  publication,  the  applicant  or  his  attorney 
will  be  duly  notified  of  the  allowance  of  his  application, 
and  a  certificate  of  registration  will  be  issued  as  pro- 
vided in  Rule  52. 

The  weekly  issue  closes  on  Thursday,  and  the  certifi- 
cates of  registration  of  that  issue  bear  date  as  of  the 
third  Tuesday  thereafter. 


ACT  OF  FEBRUARY   20,    1905.  501 

AMENDMENTS. 

39.  The  statement  may  be  amended  to  correct  infor- 
malities, or  to  avoid  objections  made  by  tlie  Office,  or 
for  other  reasons  arising  in  the  course  of  examination, 
but  no  amendments  to  the  description  or  drawing  of  the 
trademark  will  be  permitted  unless  warranted  by  some- 
thing in  the  specimens  {or  facsimiles)  as  originally  filed. 

40.  In  every  amendment,  the  exact  word  or  words  to 
be  stricken  out  or  inserted  in  the  statement  must  be 
specified,  and  the  i^recise  point  indicated  where  the 
erasure  or  insertion  is  to  be  made.  All  such  amend- 
ments must  be  on  sheets  of  }3aper  separate  from  the 
papers  previously  filed,  and  written  on  but  one  side 
of  the  paj^er. 

Erasures,  additions,  insertions,  or  mutilations  of  the 
papers  and  records  must  not  be  made  by  the  applicant 
or  attorney. 

41.  When  an  amendatory  clause  is  amended,  it  must 
be  wholly  rewritten,  so  that  no  interlineation  or  erasure 
shall  appear  in  the  clause,  as  finally  amended,  when  the 
application  is  passed  to  issue.  If  the  number  or  nature 
of  the  amendments  shall  render  it  otherwise  difficult  to 
consider  the  case,  or  to  arrange  the  papers  for  printing 
or  copying,  the  examiner  may  require  the  entire  state- 
ment to  be  rewritten. 

42.  After  allowance,  the  examiner  will  exercise  juris- 
diction over  an  application  only  by  special  authority 
from  the  Commissioner. 

Amendments  may  be  made  after  the  allowance  of  an 
application,  if  the  case  has  not  been  printed,  on  the  rec- 
ommendation of  the  examiner,  approved  by  the  Commis- 
sioner, without  withdrawing  the  case  from  issue. 

43.  After  the  completion  of  the  application,  the  Office 
will  not  return  the  papers  for  any  purpose  whatever. 
If  the  applicant  has  not  preserved  copies  of  the  papers 
which  he  wishes  to  amend,  the  Office  will  furnish  them 
on  the  usual  tenus. 


502  APPENDIX  G. 

INTERFERENCE,   OPPOSITION,   AND    CANCELLATION. 

Act  of  Feb.  20,  1905,  sec.  7. 

44.  In  case  of  conflicting  applications  for  registra- 
tion of  a  trademark,  or  in  any  dispute  as  to  the  right  to 
use  tlie  same,  which  may  arise  between  an  applicant 
and  a  registrant,  the  Office  will  declare  an  interference, 
in  order  that  the  parties  may  have  an  opportunity  to 
prove  priority  of  use,  and  the  proceedings  on  such  inter- 
ference will  follow,  as  nearly  as  practicable,  the  prac- 
tice in  interferences  between  applications  for  patents. 

Act  of  Feb.  20,  1905,  sees.  6  and  14. 

45.  Any  person  who  believes  he  would  be  damaged 
by  the  registration  of  a  mark  may  oppose  the  same  by 
filing,  in  duplicate,  a  written  notice  of  opposition  (see 
Form  10,  page  514),  stating  the  grounds  therefor,  within 
thirty  days  after  the  publication  (see  Rule  38)  of  the 
mark  sought  to  be  registered,  which  notice  of  opposi- 
tion shall  be  accompanied  by  the  fee  required  by  law, 
and  shall  be  verified  by  the  person  filing  the  same,  be- 
fore one  of  the  officers  mentioned  in  section  2  of  the 
act  of  February  20,  1905.     (See  Rule  32.) 

Act  of  Feb.  20,  1905,  sec.  13. 

46.  Any  person  deeming  himself  to  be  injured  by  the 
registration  of  a  trademark  in  the  Patent  Office,  may  at 
any  time  make  application  (see  Form  11,  page  514)  to 
the  Commissioner  to  cancel  the  registration  thereof. 
Such  application  shall  be  filed  in  duplicate,  shall  state 
the  grounds  for  cancellation,  and  shall  be  verified  by 
the  person  filing  the  same,  before  one  of  the  officers 
mentioned  in  section  2  of  the  act  of  February  20,  1905. 
(See  Rule  32.) 

Act  of  Feb.  20,  1905,  sec.  13. 

47.  If  it  appear,  after  a  hearing  before  the  examiner 
of  interferences,  that  the  registrant  was  not  entitled  to 


ACT  OF  FEBRUARY   20,   1905.  503 

the  use  of  the  mark  at  the  date  of  his  application  for 
registration  thereof,  or  that  the  mark  is  not  used  by 
the  registrant,  or  has  been  abandoned,  and  the  examiner 
in  charge  of  interferences  shall  so  decide,  the  Commis- 
sioner shall  cancel  the  registration  of  the  mark,  unless 
api)eal  be   taken  within  the  limit  fixed. 

48.  In  cases  of  opposition  and  of  applications  for 
cancellation,  the  examiner  in  charge  of  trademarks  shall 
forward  the  files  and  paj^ers  to  the  examiner  in  charge 
of  interferences,  who  shall  give  notice  thereof  to  the  ap- 
plicant or  registrant.  The  applicant  or  registrant  must 
make  answer  at  such  time,  not  less  than  thirty  days 
from  the  date  of  the  notice,  as  shall  be  fixed  by  the  ex- 
aminer in  charge  of  interferences. 

49.  The  proceedings  on  oppositions  and  on  applica- 
tions for  cancellation  shall  follow,  as  nearly  as  prac- 
ticable, the  practice  in  interferences  between  applica- 
tions for  patents. 

APPEALS. 

Act  of  Feb.  20,  1905.  sees.  8  and  14. 

50.  From  an  adverse  decision  of  the  examiner  in 
charge  of  trademarks  upon  an  applicant's  right  to  regis- 
ter a  trademark,  or  to  renew  the  registration  of  a  trade- 
mark, or  from  a  decision  of  the  examiner  in  charge  of 
interferences,  an  appeal  may  be  taken  to  the  Commis- 
sioner in  person,  upon  payment  of  the  fee  required  by 
law. 

Act  of  Feb.  20,  1905,  sec.  9. 

51.  From  the  adverse  decision  of  the  Commissioner 
of  Patents  upon  the  right  of  an  applicant  to  register  a 
trademark,  or  to  renew  the  registration  of  a  trademark, 
or  from  the  decision  of  the  Commissioner  in  cases  of 
interference,  opposition,  or  cancellation,  an  appeal  may 
be  taken  to  the  court  of  appeals  of  the  District  of  Co- 
lumbia in  the  manner  prescribed  by  the  rules  of  that 
court. 


504  APPENDIX   G. 

ISSUE,    DATE,    AND    DURATION    OF    CERTIFICATES. 
Act  of  Feb.  20,  1905,  sec.  11. 

52.  When  the  requirements  of  the  law  and  the  rules 
have  been  complied  with,  and  the  Office  has  adjudged  a 
trademark  registrable,  a  certificate  will  be  issued,  signed 
by  the  Commissioner,  under  the  seal  of  the  Patent 
Office,  to  the  effect  that  the  applicant  has  complied  with 
the  law  and  that  he  is  entitled  to  registration  of  his 
trademark.  The  certificate  shall  state  the  date  on  which 
the  application  for  registration  was  received  in  the 
Patent  Office.  Attached  to  the  certificate  will  be  a 
photolithographed  copy  of  the  drawing  of  the  trade- 
mark and  a  printed  copy  of  the  statement  and  the  decla- 
ration. 

Act  of  Feb.  20,  1905,  sec.  12. 

53.  A  certificate  of  registration  shall  remain  in  force 
twenty  years  from  its  date,  except  that,  in  case  a 
trademark  be  previously  registered  in  a  foreign  country, 
such  certificate  shall  cease  to  be  in  force  on  the  day  on 
which  the  trademark  ceases  to  be  protected  in  such  for- 
eign country,  and  shall  in  no  case  remain  in  force  more 
than  twenty  years,  unless  renewed. 

Act  of  Feb.  20,  1905,  sees.  12  and  14. 

54.  A  certificate  of  registration  may  be,  from  time 
to  time,  renewed  for  like  periods  on  payment  of  the  re- 
newal fees  required,  upon  request  by  the  registrant,  his 
legal  representatives,  or  transferees  of  record  in  the 
Patent  Office,  and  such  request  may  be  made  at  any  time 
not  more  than  six  months  prior  to  the  expiration  of 
the  period  for  which  the  certificate  of  registration  was 
issued  or  renewed. 

Act  of  Feb.  20,  1905,  sec.  12. 

55.  Certificates  of  registration  in  force  on  the  1st 
day  of  April,  1905,  shall  remain  in  force  for  the  period 
for  which  they  were  issued,  and  shall  be  renewable  on 


ACT  OP  FEBRUARY   20,   1905.  505 

the  same  conditions  and  for  the  same  periods  as  certifi- 
cates issued  under  the  provisions  of  tlie  act  of  Februaiy 
20,  1905,  and,  when  so  renewed,  shall  have  the  same 
force  and  effect  as  certificates  issued  thereunder. 

Act  of  Feb.  20,  1905,  sec.  4. 

56.  A  certificate  of  registration  shall  not  be  issued 
to  an  applicant  located  in  a  foreign  country  for  any 
trademark  for  registration  of  which  he  has  filed  an  ap- 
l)lication  in  such  foreign  country,  until  such  mark  has 
been  actually  registered  by  him  in  the  country  in  which 
he  is  located. 

ASSIGNMENTS. 

Act  of  Feb.  20,  1905,  sec.  10. 

57.  Every  registered  trademark  and  every  mark  for 
the  registration  of  which  application  has  been  made,  to- 
gether with  the  application  for  registration  thereof, 
shall  be  assignable  in  connection  with  the  good-will  of 
the  business  in  which  the  mark  is  used.  Such  assign- 
ment must  be  by  an  instiTiment  in  writing  and  duly 
acknowledged  according  to  the  laws  of  the  country'  or 
State  in  which  the  same  is  executed.  Provision  is  made 
for  recording  such  assignments  in  the  Patent  Office; 
but  no  such  assignment  will  be  recorded  unless  it  is  in 
the  English  language,  nor  unless  an  application  for  the 
registration  of  the  mark  shall  have  been  first  filed  in 
the  Patent  Office,  and  such  assignment  must  identify  the 
application  by  serial  number  and  date  of  filing,  or,  when 
the  mark  has  been  registered,  by  the  certificate  number 
and  date  thereof.  No  particular  form  of  assignment 
is  prescribed. 

Act  of  Feb.  20,  1905,  sec.  10. 

58.  An  assignment  shall  be  void  as  against  any  sub- 
sequent purchaser  for  a  valuable  consideration,  without 
notice,  unless  it  he  recorded  in  the  Patent  Office  within 
three  months  from  the  date  thereof. 

59.  The  certificate  of  registration  may  l^e  issued  to 


506  APPENDIX  Q. 

the  assignee  of  the  applicant,  but  the  assignment  must 
first  be  entered  of  record  in  the  Patent  Office. 

COPIES  AND  PUBLICATIONS. 
Act  of  Feb.  20,  1905,  sees.  11  and  14. 

60.  After  a  trademark  has  been  registered,  printed 
copies  of  the  statement  and  declaration  in  each  case, 
with  a  photolithographed  copy  of  the  drawing  of  the 
trademark,  may  be  furnished  by  the  Office  upon  the  pay- 
ment of  the  fee.     (See  Kule  63.) 

61.  An  order  for  a  copy  of  an  assignment  must  give 
the  liber  and  page  of  the  record,  as  well  as  the  name 
of  the  applicant;  othei^wise  an  extra  charge  will  be 
made  for  the  time  consumed  in  making  a  search  for 
such  assignment. 

62.  The  Official  Gazette  of  the  Patent  Office  will  con- 
tain a  list  of  all  trademarks  registered,  with  the  name 
and  address  of  the  registrant  in  each  case,  a  description 
of  the  trademark  itself,  and  a  recitation  of  the  particu- 
lar description  of  goods  to  which  it  is  applied. 

FEES. 
Rev.  Stat.,  4893;    act  of  Feb.  20,  1905,  sec.  14. 

63.  On  filing  each  original  application  for  the  registration  of 

a   trademark $10.00 

On  filing  each  application  for  renewal  of  the  registration  of 
a  trademark 10.00 

On  filing  notice  of  opposition  to  the  registration  of  a  trade- 
mark         10-00 

On  appeal  from  the  examiner  in  charge  of  trademarks  to  the 
Commissioner  of   Patents 15.00 

On  appeal  from  the  decision  of  the  examiner  in  charge  of 
interferences,  awarding  ownership  of  a  trademark  or  canceling 
the  registration  of  a  trademark,  to  the  Commissioner  of  Patents,     15.00 

For    manuscript    copies,    for    every    100    words  or  fraction 


thereof 


.10 


For  recording  every  assignment,  agreement,  power  of  attor- 
ney, or  other  paper,  of  300  words  or  less 1.00 

For  recording  every  assignment,  agreement,  power  of  attor- 
ney  or  other  paper  of  more  than  300  words  and  less  than  1,000 

2.00 


"words 


ACT  OF  FEBRUARY   20,   1905.  507 

For  recording  every  assignment,  agreement,  power  of  attor- 
ney, or  other  paper  of  more  than  1,000  words 3.00 

For  abstracts  of  title: 

For  the  certificate  of  search 1.00 

For  each  brief  from  the  digest  of  assignments .20 

For  searching  titles  or  records,  one  hour  or  less .50 

Each  additional  hour  or  fraction  thereof 50 

For  a   single   printed   copy   of   statement,    declaration,    and 

drawing   05 

If  certified,  for  the  grant,  additional 50 

For  the  certificate   25 

Rev.  Stat.,  4935. 

64.  Money  required  for  Office  fees  may  be  paid  to 
the  Commissioner  of  Patents,  or  to  the  Treasurer,  or  to 
any  of  the  assistant  treasurers  of  the  United  States,  or 
to  any  of  the  depositaries,  national  banks,  or  receivers 
of  public  money,  designated  by  the  Secretarj^  of  the 
Treasury  for  that  purpose,  and  such  officer  shall  give 
the  depositor  a  receipt  or  certificate  of  deposit  therefor, 
which  shall  be  transmitted  to  the  Patent  Office.  AVhen 
this  can  not  be  done  without  inconvenience,  the  money 
may  be  remitted  by  mail,  and  in  every  such  case  the 
letter  should  state  the  exact  amount  inclosed.  All 
money  orders,  drafts,  and  checks  should  be  made  pay- 
able to  the  "Commissioner  of  Patents." 

65.  All  money  sent  by  mail,  to  the  Patent  Office,  will 
be  at  the  risk  of  the  sender.  All  payments  to  the  Office 
must  be  made  in  specie,  Treasury  notes,  national-bank 
notes,  certificates  of  deposit,  money  orders,  or  certified 
checks. 

REPAYMENT    OF    MONEY. 
Rev.  Stat.,  4936;    act  of  Feb.  20,  1905,  sec.  15. 

66.  Money  paid  by  actual  mistake,  such  as  a  pay- 
ment in  excess,  or  when  not  required  by  law,  or  by 
neglect  or  misinformation  on  the  part  of  the  Office,  will 
be  refunded;  but  a  mere  change  of  purpose  after  the 
payment  of  money,  as  when  a  party  desires  to  withdraw 
his  application  for  the  registration  of  a  trademark,  or 


508  APPENDIX  G. 

to  withdraw  an  appeal,  will  not  entitle  a  party  to  de- 
mand such  a  return. 

NOTICE   OF   REGISTRATION. 

Act  of  Feb.  20,  1905,  sec.  28. 

67.  It  shall  be  the  duty  of  the  registrant  to  give 
notice  to  the  public  that  a  trademark  is  registered, 
either  by  aflSxing  thereon  the  words  "  Registered  in  U. 
S.  Patent  Office,"  or  "Reg.  U.  S.  Pat.  Off.,"  or,  when 
from  the  character  and  size  of  the  trademark,  or  from 
its  manner  of  attachment  to  the  article  to  which  it  is 
appropriated,  this  can  not  be  done,  then  by  affixing  a 
label  containing  a  like  notice  to  the  package  or  re- 
ceptacle wherein  the  article  or  articles  are  inclosed; 
otherwise,  on  a  suit  for  infringement,  no  damages  shall 
be  recovered  except  on  proof  that  the  defendant  was 
duly  notified  of  infringement,  and  continued  the  same 
after  such  notice. 

AMENDMENTS    OF    THE   RULES. 

68.  All  amendments  of  the  foregoing  rules  will  be 
published  in  the  Official  Gazette. 

QUESTIONS   NOT   SPECIFICALLY  PROVIDED   FOR. 

69.  All  cases  not  specifically  defined  and  provided 
for  in  these  rules  will  be  decided  in  accordance  with 
the  merits  of  each  case  under  the  authority  of  the  Com- 
missioner, and  such  decision  will  be  communicated  to 
the  interested  parties  in  writing. 

Frederick  I.  Allen, 
Commissioner  of  Patents. 

Department  of  the  Interior. 
Approved,  to  take  effect  April  1,  1905. 

E.   A.  Hitchcock, 

Secretary. 


ACT  OF  FEBRUARY   20,   1905.  509 

FOIIMS  FOll  PATENT  OFFICE  PRACTICE.. 

The  following  forms  illustrate  the  manner  of  prepar- 
ing papers  for  applications  for  registration  of  trade- 
marks. Applicants  will  find  their  business  facilitated 
by  following  them  closely: 

(1)    PETITION. 
To  the  Commissioner  of  Patents: 

The  undersigned  presents  herewith  a  drawing  and  five  specimens 
(or  facsimiles)  of  his  trademark,  and  requests  that  the  same,  together 
with  the  accompanying  statement  and  declaration,  may  be  registered 
in  the  United  States  Patent  Office  in  accordance  with  the  law  in  such 

cases  made  and  provided. 

(Signature) . 

Dated ,  19—. 

(2)    STATEMENT  FOR  AN   INDIVIDUAL. 

To  all  ichom  it  may  concern: 

Be  it  known  that  I, ,  a  citizen  (or  subject,  as  the  case 

may  be)   of  the ,  residing  at  ,  ,  and   doing 

business  at  No. street,  in  said  city,  have  adopted  for  my 

use  a  trademark  of  which  the  following  is  a  description: 

My  trademark  consists  of . 

The  trademark  has  been  continuously  used  in  my  business  since 


The  class  of  merchandise  to  which  the  trademark  is  appropriated 

is  ,  and  the  particular  description  of  goods  comprised  in  said 

class  upon  which  I  use  said  trademark  is  . 

The  trademark  is  displayed  on  the  packages  containing  the  goods, 
by  placing  thereon  a  printed  label  on  which  the  same  is  shown  [or  state 
other  modes  of  application  to  the  goods}. 

(Signature) . 

(3)   DECLARATION   FOR  AN   INDIVIDUAL. 
State  of .  County  of 


-,  being  duly  sworn,  deposes  and  says  that  he  is  the 
applicant  named  in  the  foregoing  statement;  that  he  believes  the  fore- 
going statement  is  true;  that  he  believes  himself  to  be  the  owner  of 
the  trademark  sought  to  be  registered;  that  no  other  person,  firm, 
corporation,  or  association,  to  the  best  of  his  knowledge  and  belief, 
has  the  right  to  use  said  trademark,  either  in  the  identical  form  or 
in  any  such  near  resemblance  thereto  as  might  be  calculated  to  de- 
ceive; that  said  trademark  is  used  by  him  in  commerce  among  the 
several  States  of  the  United  States  and  (or)  between  the  United 
States  and  foreign  nations  or  Indian  tribes,  and  particularly  with  [here 
name  one  or  more  foreign  7iations  or  Indian  tribes,  or  both,  as  the  case 
may  be];    and  that  the  description,  drawing,  and  specimens   (or  fac- 


510  APPENDIX  G. 

similes)   presented  truly  represent  the  trademark  sought  to  be  regis- 
tered. 

(Signature) . 

Subscribed  and  sworn  to  before  me,  a ,  this day 

of  ,  19—. 

[l.  s.]  (Signature) , 

lOfflcial  dharacter.} 

(4)    STATEMENT  FOR  A  FIRM. 
To  all  whom  it  may  concern: 


Be  it  known  that  we,  ,  a  firm  domiciled   in 


county  of  ,   State  of  ,   and   doing   business   at   No.   

street,  in  said  city,  and  composed  of  the  following  members, 

,  ,  ,  citizens  of   {or  subjects,  as  the  case  may  be) 

,  have  adopted  for  our  use  a  trademark,  of  which  the  following 


is  a  description: 

Our  trademark  consists  of 


The  trademark  has  been  continuously  used   in  our  business  since 


The  class  of  merchandise  to  which  the  trademark  is  appropriated 

is  ,  and  the  particular  description  of  goods  comprised  in  said 

class  upon  which  said  trademark  is  used  is . 


The  trademark  is  displayed  on  the  packages  containing  the  goods, 
by  placing  thereon  a  printed  label  on  which  the  same  is  shown  [or 
state  other  modes  of  application  to  the  goods'^. 

(Signature) , 

By , 

A  member  of  the  firm. 

(5)   DECLARATION  FOR  A  FIRM. 
State  of ,  County  of ,  ss: 


,  being  duly  sworn,  deposes  and  says  that  he  is  a 

member  of  the  firm,  the  applicant  named  in  the  foregoing  statement; 

that  he  believes  the  foregoing  statement  is  true;  that  he  believes  said 

firm  is  the  owner  of  the  trademark  sought  to  be  registered;   that  no 

other  person,  firm,    corporation,    or    association,    to    the    best    of    his 

knowledge  and  belief,  has  the  right  to  use  said  trademark,  either  in 

the  identical  form  or  in  any  such  near  resemblance  thereto  as  might 

be  calculated  to  deceive;    that  said  trademark  is  used  by  said  firm  in 

commerce  among  the  several   States  of  the  United  States  and    {or) 

between  the  United  States  and  foreign  nations  or  Indian  tribes,  and 

particularly  with  [here  name  one  or  more  foreign  nations  or  Indian 

tribes,  or  both,  as  the  case  may  be] ;   and  that  the  description,  drawing, 

and  specimens  {or  facsimiles)  presented  truly  represent  the  trademark 

sought  to  be  registered. 

(Signature) . 

Subscribed  and  sworn  to  before  me,  a ,  this day 

of  .  19— 

[l.  s.]  (Signature) . 

[Official  character.'] 


ACT  OF  FEBRUARY   20,   1905.  511 

(6)   STATEMENT  FOR  A  CORPORATION  OR  ASSOCIATION. 

To  all  whom  it  may  concern: 

Be  it  known  that  ,  a  corporation  (or  association)  duly  organ- 
ized under  the  laws  of  the  State  of (or  country),  and  located  in 

the  city  of  ,  county  of  ,  in  said  State   (or  country),  and 

doing  business  at  No. street,  in  said  city  of  ,  has 

adopted  for  its  use  a  trademark  of  which  the  following  is  a  descrip- 
tion: 

The  trademark  consists  of . 

The  trademark   has  been   continuously  used   In  our  business  since 


The  class  of  merchandise  to  which  the  trademark  is  appropriated 

is  ,  and  the  particular  description  of  goods  comprised    in    said 

class  upon  which  said  trademark  is  used  is  . 

The  trademark  is  displayed  on  the  packages  containing  the  goods, 
by  placing  thereon  a  printed  label  on  which  the  same  is  shown  [or 
state  other  modes  of  application  to  the  goods]. 

(Signature) , 

By „ 

Secretary  (or  other  officer). 

(7)   DECLARATION  FOR  A  CORPORATION  OR  ASSOCIATION. 
State  of .  County  of ,  ss: 


,  being  duly  sworn,  deposes  and  says  that  he  is  the 

secretary  (or  other  officer)  of  the  corporation  (or  association) ,  the  ap- 
plicant named  in  the  foregoing  statement;  that  he  believes  the  fore- 
going statement  is  true;  that  he  believes  said  corporation  (or  associa- 
tion) is  the  owner  of  the  trademark  sought  to  be  registered;  that  no 
other  person,  firm,  corporation,  or  association,  to  the  best  of  his  knowl- 
edge and  belief,  has  the  right  to  use  said  trademark,  either  in  the 
identical  form  or  in  any  such  near  resemblance  thereto  as  might  be 
calculated  to  deceive;  that  said  trademark  is  used  by  said  corporation 
(or  association)  in  commerce  among  the  several  States  of  the  United 
States,  and  (or)  between  the  United  States  and  foreign  nations  or 
Indian  tribes,  and  particularly  with  [here  name  one  or  more  foreign 
nations  or  Indian  tribes,  or  both,  as  the  case  may  be] ;  and  that  the 
description,  drawing,  and  specimens  (or  facsimiles)  presented  truly 
represent  the  trademarK  sought  to  be  registered. 

(Signature) . 

Subscribed  and  sworn  to  before  me,  a ,  this day 

of .  19—. 

[L.  s.]  (Signature) . 

(Official  Character.) 

(8)   DECLARATION   FOR    APPLICANTS    UNDER   THE    TEN-YEAR 

PROVISO. 

State  of ,  County  of ,  ss: 


-,  being  duly  sworn,  deposes  and  says  that  he  is  the 


512  APPENDIX  G. 

applicant  named  in  the  foregoing  statement;  that  he  believes  the  fore- 
going statement  is  true;  that  he  believes  himself  to  be  the  owner  of 
the  mark  sought  to  be  registered;  that  no  other  person,  firm,  corpora- 
tion, or  association,  to  the  best  of  his  knowledge  and  belief,  has  the 
right  to  use  said  trademark,  either  in  the  identical  form  or  in  any  such 
near  resemblance  thereto  as  might  be  calculated  to  deceive;  that  said 
mark  is  used  by  him  in  commerce  among  the  several  States  of  the  Unit- 
ed States,  and  (or)  between  the  United  States  and  foreign  nations  or 
Indian  tribes,  and  particularly  with  [here  name  one  or  more  foreign 
nations  or  Indian  tribes,  or  both,  as  the  case  may  be] ;  that  the  descrip- 
tion, drawing,  and  specimens  (or  facsimiles)  presented  truly  represent 
the  mark  sought  to  be  registered;  and  that  the  mark  has  been  in  actual 
use  as  a  trademark  of  the  applicant,  or  his  predecessors  from  whom 
he  derived  title,  for  ten  years  next  preceding  the  passage  of  the  act  of 
February  20,  1905,  and  that,  to  the  best  of  his  knowledge  and  belief, 
such  use  has  been  exclusive.^ 

(Signature) . 

Subscribed  and  sworn  to  before  me,  a ,  this day 

of  .  19—. 

[L.  s.]  (Signature) . 

{Official  Character.) 


(9)    DECLARATION  FOR   FOREIGNERS. 

State  of ,  County  of ,  ss: 

,  being  duly  sworn,  deposes  and  says  that  he  is  the 

applicant  named  in  the  foregoing  statement;  that  he  believes  the  fore- 
going statement  is  true;  that  he  believes  himslf  to  be  the  owner  of 
the  trademark  sought  to  be  registered;  that  no  other  person,  firm, 
corporation,  or  association,  to  the  best  of  his  knowledge  and  belief,  has 
the  right  to  use  said  trademark,  either  in  the  identical  form  or  in  any 
such  near  resemblance  thereto  as  might  be  calculated  to  deceive;  that 
said  trademark  has  been  registered  in  [here  name  the  foreign  country 
in  which  applicant  resides  or  is  located,  and  the  date  and  number  of  the 
registration'],  (or)  that  an  application  for  registration  of  said  trade- 
mark was  filed  by  him  on  the day  of ,  19—,  in  [here  name 

the  foreign  country  in  which  applicant  resides  or  is  located^;  that  the 
description,  drawing,  and  specimens  (or  facsimiles)  presented  truly 
represent  the  trademark  sought  to  be  registered. ^ 

(Signature) . 

Subscribed  and  sworn  to  before  me,  a ,  this day 

of  .  19— 

[l.  s.]  (Signature) , 

(Official  character.) 


1  In  case  the   applicant  is  a  firm,  corporation,   or   association,  the 
declaration   should   be  modified   accordingly. 


ACT  OF  FEBRUARY   20,    1905. 


513 


.'■\^^i,lttefe^k//' 


Froprtetor 


^J 


AUorriBf/. 


514  APPENDIX  G. 

(10)     NOTICE  OF  OPPOSITION. 

To  the  Commissioner  of  Patents: 

In  the  matter  of  an  application  for  the  registration  of  a  trademark 

for  ,  No.  ,  filed ,  ,  by ,  of 

,  I, ,  residing  at  No. street,  in  the 

city  of ,  State  of  ,  hereby  give  notice  of  my  intention  to 

oppose  the  registration  of  said  trademark  which  was  published  on 
page  — ,  No.  ,  of  the  Official  Gazette  of ,  19 — . 

The  grounds  for  opposition  are  as  follows: , 

Dated  this  day  of  ,  19—. 

(Signature) . 

State  of ,  County  of ,  ss: 

On  this  day  of  ,  19 — ,  before  me,  a ,  in 

and  for  ,  ,  personally  appeared ,  the  above- 
named  party,  who,  being  duly  sworn,  deposes  and  says  that,  to  the 
best  of  his  knowledge  and  belief,  the  facts  above  stated  are  true. 

[l.  s.]  (Signature) , 

(Official  character.) 

(11)    FORM  FOR  APPLICATION  FOR  CANCELLATION  OF  TRADE- 
MARK. 

To  the  Commissioner  of  Patents: 

In  the  matter  of  trademark  No.  ,  registered ,  19 — , 

by  ,  of  ,  and  published  on  page  — ,  vol.  — ,  No. 

,  of  the  Official  Gazette  for ,  19 — ,  I,  the  undersigned, 

residing  at  No. street,  in  the  city  of  ,  State  of  , 

hereby  apply  for  the  cancellation  of  the  registration  of  the  above-noted 

trade-mark.  The  grounds  for  cancellation  are  as  follows: . 

(Signature) . 

Dated  this  day  of ,  19—. 

State  of ,  County  of ,  ss: 

On  this  day  of  ,  19 — ,  before  me,  a ,  in 

and  for  ,  ,  personally  appeared ,  the  above- 
named  party,  who,  being  duly  sworn,  deposes  and  says  that,  to  the 
best  of  his  knowledge  and  belief,  the  facts  above  stated  are  true. 

[L.  s.]  (Signature) , 

(Official  cfharacter.) 


APPENDIX   H. 

TRADE-MARK   STATUTES  OF  THE  STATES  AND 
TERRITORIES. 

ALABAMA. 

No  registration  law. 

Article  8,  c.  196,  Code,  1896,  an  Act  relating  to  the 
unauthorized  use  or  defacement  of  the  bottles,  siphons, 
kegs,  etc.,  of  manufacturers,  bottlers  and  venders  of 
soda  water  and  other  beverages. 

Act  of  March  1,  1901.  An  Act  for  the  protection  of 
labels  of  labor  unions. 


ALASKA. 

Carter's  Annotated  Alaska  Codes,  Page  18. 

§  84.  Knowingly  Using  or  Counterfeiting  Trade- 
marks, etc.  That  if  any  person  shall  wilfully  and 
knowingly  use  or  cause  to  be  used  any  private  brand, 
label,  stamp,  or  trademark  of  another,  either  by  counter- 
feiting the  same  or  using  any  impression,  or  copy 
thereof  made  or  prepared  by  the  proprietor  thereof, 
or  shall  wilfully  and  knowingly  use  or  cause  to  be  used 
any  colorable  imitation  of  such  brand,  label,  stamp,  or 
trademark,  with  intent  to  deceive  any  one,  such  person, 
upon  conviction  thereof,  shall  be  punished  by  imprison- 
ment in  the  county  jail  not  less  than  one  month  nor 
more  than  six  months,  or  by  fine  not  less  than  twenty 
nor  more  than  three  hundred  dollars. 

515 


516  APPENDIX  H. 


ARIZONA. 

ACT  of  1899. 

An  act  concerning  the  protection  of  trademarks  and 
labels  and  providing  a  penalty  for  the  imitation  of 
the  same. 

Section  1.  Whenever  any  corporation,  association  or 
union  of  workingmen  have  adopted  or  shall  hereafter 
adopt  for  its  or  their  protection  any  label,  trademark, 
or  form  of  advertisement  announcing  that  goods  to 
which  such  label,  trademark,  or  form  of  advertisement 
shall  be  attached,  were  manufactured  by  it  or  by  a 
member  or  members  of  such  union,  it  shall  be  unlawful 
for  any  person  or  corporation  to  counterfeit  or  imitate 
such  label,  trademark  or  form  of  advertisement;  every 
person  violating  this  section  shall,  upon  conviction,  be 
punished  by  imprisonment  in  the  county  jail  for  not  less 
than  three  months  nor  more  than  one  year,  or  by  a  fine 
of  not  less  than  one  hundred  dollars,  nor  more  than 
two  hundred  dollars,  or  by  fine  and  imprisonment. 

Sec.  2.  Any  person  who  shall  use  any  counterfeit  or 
imitation  of  any  label,  trademark  or  form  of  advertise- 
ment of  any  such  corporation,  union  or  association, 
knowing  the  same  to  be  counterfeit  or  imitation,  shall 
be  -  guilty  of  a  misdemeanor,  and  shall  be  punished  by 
imprisonment  in  the  county  jail  for  a  term  of  not  less 
than  three  months  nor  more  than  one  year,  or  by  a  fine 
of  not  less  than  one  hundred  dollars  nor  more  than  two 
hundred  dollars,  or  by  both. 

Sec.  3.  Every  such  association,  union  or  corporation 
that  has  heretofore  adopted  or  shall  hereafter  adopt  a 
label,  trademark  or  form  of  advertisement,  as  afore- 
said, shall  file  the  same  in  the  office  of  the  secretary 
of  the  territory,  by  leaving  two  copies,  counterparts  or 
fac-similes  thereof  with   the  secretary  of  the  territory; 


STATE  TRADEMARK  STATUTES.  517 

said  secretary  shall  deliver  to  such  corporation,  associa- 
tion or  union  so  filing  the  same,  a  duly  attested  certifi- 
cate of  the  record  of  the  same,  for  which  he  shall  re- 
ceive a  fee  of  three  dollars;  such  certificate  of  record 
shall  in  all  suits  and  prosecutions  under  this  act  be 
sufficient  proof  of  the  adoption  of  such  label,  trademark 
or  form  of  advertisement,  and  of  the  right  of  said 
union,  corporation  or  association,  to  adopt  the  same. 

Sec.  4.  Every  person  who  shall  use  or  display  the 
genuine  label,  trademark  or  form  of  advertisement  of 
any  such  association,  corporation  or  union  in  any  man- 
ner not  authorized  by  such  association,  corporation  or 
union,  shall  be  deemed  guilty  of  a  misdemeanor,  and 
shall  be  punished  by  imprisonment  in  the  county  jail 
not  less  than  three  months  nor  more  than  one  year,  or 
by  a  fine  of  not  less  than  one  hundred  dollars,  nor  more 
than  two  hundred  dollars,  or  both. 

Sec.  5.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  association,  corpora- 
tion or  union,  or  officer  thereof,  in  and  about  the  sale  of 
goods,  or  otherwise  not  being  authorized  to  use  the 
same,  shall  be  guilty  of  a  misdemeanor,  punishable  by 
imprisonment  in  the  county  jail  of  not  less  than  three 
months  nor  more  than  one  year,  or  by  a  fine  of  not  less 
than  one  hundred  dollars,  nor  more  than  two  hundred 
dollars,  or  both. 

Sec.  6.  It  shall  be  the  duty  of  the  secretary^  of  the 
territory  to  see  that  all  associations,  unions,  or  corpora- 
tions enjoying  the  benefits  of  labels,  trademarks,  or 
forms  of  advertisements  herein  described  shall  comply 
with  the  foregoing  provisions  in  all  respects. 

Sec.  7.  This  act  shall  take  effect  and  be  in  force  from 
and  after  its  passage. 

Approved  March  6,  1899. 


518  APPENDIX  H. 


ARKANSAS. 

Sandels   &  Hill's   Digest,    Statutes   of   Arkansas,   Chapter  CL. 

Section  7347.     Protection  in  use  of,  how  secured. 

Sec.  7348.     Declaration  under  oath  of  party  claiming. 

Sec.  7349.  Secretary  of  state  not  to  record  name  unaccompanied 
by  marks  distinguishable  from  others. 

Sec.  7350.  Copies  of  trademark,  etc.,  under  seal  of  secretary  of 
state,  may  be  used  as  evidence. 

Sec.  7351.  Trademarks  to  remain  in  force  twenty-five  years;  ex- 
ception. 

Sec.  7352.     Penalty  for   violating  trademark. 

Sec.  7353.  No  action  allowed  to  protect  trademark  used  in  unlaw- 
ful business  or  obtained  by  fraud,  etc. 

Sec.  7354.  Persons  obtaining  trademark  by  fraud  liable  for  dam- 
ages. 

Sec.  7355.     Construction  of  act. 

Section  7347.  Any  person  or  firm  in  this  state,  or 
any  of  the  United  States  or  territories  thereof,  and  any 
corporation  created  by  the  authority  of  this  state,  or  the 
United  States  or  any  of  the  states  or  territories  thereof, 
and  any  person,  firm  or  corporation,  resident,  or 
located  in  any  foreign  country,  which,  by  treaty  or 
convention,  atTords  similar  privileges  to  citizens  of  the 
United  States,  and  who  may  be  entitled  to  the  exclusive 
use  of  any  lawful  trademark  or  device,  or  who  may 
intend  to  adopt  and  use  any  trademark  or  device  for 
exclusive  use  in  this  state,  may  obtain  protection  for 
such  lawful  trademark  or  device  by  complying  with  the 
following  requisites  and  requirements. 

First— By  making  out  and  filing  in  the  office  of  the 
Secretary  of  State  of  this  state,  to  be  there  registered 
or  recorded,  a  statement  specifying  the  names  of  the 
parties  and  their  residence  and  place  of  business  who 
desire  the  protection  of  the  trademark,  the  class  of  mer- 
chandise, and  particular  description  of  goods  comprised 
in  such  class,  by  which  or  to  which  the  trademark  has 
been  or  is  intended  to  be  appropriated;  a  description  of 
the  trademark  itself  or  device,  or  combination  of  words, 


STATE  TRADEMARK  STATUTES.  519 

letters  or  figures  or  characters  used  or  intended  to  be 
used  as  such,  and  the  mode  in  whicli  it  has  been  or  is 
intended  to  be  applied  and  used,  and  the  length  of  time, 
if  any,  during  wliicli  the  trademark  has  been  in  use. 

Second— By  making  payment  to  the  Secretary  of 
State,  for  the  use  of  the  state,  of  a  fee  of  not  less  than 
twenty-five  nor  more  than  one  hundred  dollars,  to  be 
determined  by  the  Secretary  according  to  a  schedule  of 
fees  arranged  with  reference  to  tlie  number  of  words, 
figures,  characters,  etc.,  contained  in  such  statement, 
which  schedule  it  is  made  the  duty  of  the  Secretary  to 
make  and  keep  posted  up  in  his  office. 

Sec.  7348.  The  certificate  prescribed  in  the  preceding 
section  must,  in  order  to  create  any  right  whatever  in 
favor  of  the  party  filing  it,  be  accompanied  by  a  writ- 
ten declaration,  verified  by  the  person  or  by  some  mem- 
ber of  the  firm  or  officer  of  the  corporation  by  whom  it 
is  filed,  to  the  effect  that  the  party  claiming  the  x^ro- 
tection  for  the  trademark  has  a  right  to  the  use  of  the 
same,  and  that  no  other  person,  firm  or  corporation  has 
the  right  to  such  use,  either  in  the  identical  form  or  in 
an}''  such  near  resemblance  therto  as  might  be  calculated 
to  deceive,  and  that  the  fac-similes  presented  for  record 
are  true  copies  of  the  trademark  sought  to  be  protected. 

Sec.  7349.  The  Secretary  shall  not  receive  and  record 
any  proposed  trademark  which  is  not  and  can  not  be- 
come a  lawful  trademark,  or  which  is  merely  the  name 
of  a  person,  firm  or  corporation,  unaccompanied  by  a 
mark  sufficient  to  distinguish  it  from  the  same  name 
when  used  by  other  persons,  or  which  is  identical  with  a 
trademark  appropriated  to  the  same  class  of  merchan- 
dise and  belonging  to  a  different  owner,  and  already 
registered  or  received  for  registration,  or  which  so 
nearly  resembles  such  last-mentioned  trademark  as  to  be 
likely  to  deceive  the  public.  But  this  section  shall  not 
prevent  the  registry  of  any  lawful  trademark  rightfully 
in  use  on  the  first  day  of  May,  1883. 


520  APPENDIX  H. 

Sec.  7350.  The  time  of  the  receipt  of  any  trademark 
at  the  office  of  the  Secretary  of  State,  for  registration  or 
record,  shall  be  noted  and  recorded.  Copies  of  the 
trademark,  and  of  the  date  of  receipt  thereof,  and  of  the 
statement  filed  therewith,  under  the  seal  of  the  secretary 
of  state  shall  be  furnished  by  the  Secretary  to  any  per- 
son who  may  apply  therefor,  and  pay  the  fee  therefor 
fixed  by  the  Secretary,  not  exceeding  the  fee  required 
for  the  original  registration  thereof,  and  such  copies 
shall  be  evidence  in  any  suit  or  j)roceeding  in  which 
such  trademark  shall  be  brought  in  controversy. 

Sec.  7351.  A  trademark  registered  as  above  pre- 
scribed shall  remain  in  force  for  twenty-five  years  from 
the  date  of  such  registration,  except  in  case  where  such 
trademark  is  claimed  for,  and  applied  to,  articles  not 
manufactured  in  this  state,  and  in  which  it  receives  pro- 
tection under  the  laws  of  some  other  state,  territory  or 
foreign  country  for  a  shorter  period,  in  which  case  it 
shall  cease  to  have  any  force  in  this  state,  by  virtue  of 
this  act,  at  the  same  time  that  it  becomes  of  no  effect 
elsewhere. 

Sec.  7352.  Such  trademark,  during  the  period  it  re- 
mains in  force,  shall  entitle  the  person,  firm  or  corj^ora- 
tion  registering  the  same  to  the  exclusive  use  thereof,  so 
far  as  regards  the  description  of  goods  to  which  it  is 
appropriated  in  the  statement  filed  under  oath,  as  afore- 
said, and  no  other  party  shall  lawfully  use  the  same 
trademark,  or  substantially  the  same  or  so  nearly 
resembling  it  as  to  be  calculated  to  deceive,  on  sub- 
stantially the  same  description  of  goods,  or  obtain,  use 
or  employ  any  article  or  thing  whatever  upon  which 
such  trademark,  or  substantially  the  same,  or  one  so 
nearly  resembling  it  as  to  be  calculated  to  deceive,  has 
been  printed,  painted,  stamped,  woven,  branded  or  in  any 
manner  put  or  placed,  for  the  purpose  of  putting  up, 
shipping,  selling,  or  otherwise  disposing  of  substantially 
the   same   description   of  goods   as   those  to   which  the 


STATE  TR^VDEMARK  STATUTES.  521 

same  has  been  appropriated  by  the  party  rightfully  en- 
titled to  the  use  of  such  trademark;  and  any  person  or 
member  of  any  firm,  or  agent,  or  officer  of  any  cor- 
poration, not  entitled  so  to  do,  who  shall  knowingly  use 
such  trademark,  or  obtain,  use  or  employ,  as  aforesaid, 
any  such  article  or  thing,  or  shall  reproduce,  counter- 
feit, copy  or  imitate  any  recorded  trademark,  and  affix 
the  same  to,  or,  for  the  purpose  of  having  tlie  same  used 
or  disposed  of,  to  affix  to  goods  of  substantially  the 
same  descriptive  properties  and  qualities  as  those  re- 
ferred to  in  the  registration,  or  who  shall,  with  intent 
to  defraud,  deal  in  or  sell,  or  keep,  or  offer  for  sale,  or 
cause  or  procure  the  sale  of,  any  goods  of  substantially 
the  same  descriptive  properties  as  those  referred  to  in 
the  registration  of  any  trademark  registered  in  pursu- 
ance of  this  act,  to  which,  or  to  the  package  in  which  the 
same  are  put  up,  is  fraudulently  affixed  said  trademark, 
or  any  colorable  imitation  thereof,  calculated  to  deceive 
the  public,  Iniowing  the  same  to  be  counterfeit,  or  not 
the  genuine  article,  or  goods  referred  to  in  said  registra- 
tion, shall  be  deemed  guilty  of  a  high  misdemeanor,  and 
upon  conviction  thereof,  shall  be  punished  by  a  fine  not 
exceeding  one  thousand  dollars,  or  imprisonment  not 
exceeding  one  year,  or  both  such  fine  and  imprisonment, 
and  such  person,  and  also  the  firm  of  which  he  is  a 
member,  or  the  corporation  of  which  he  is  an  agent  or 
officer,  and  which  may  have  countenanced  or  connived 
at  his  act,  shall  moreover  be  liable  to  an  action  for  dam- 
ages for  such  wrongful  act,  at  the  suit  of  the  owner  of 
such  trademark,  and  the  party  aggrieved  shall  also  have 
his  remedy  according  to  the  course  of  equity,  to  enjoin 
the  wrongful  use  of  his  trademark,  and  to  recover  com- 
pensation therefor  in  any  court  of  competent  jurisdic- 
tion, and  in  any  such  action  or  suit  such  owner  or  ag- 
grieved party  shall  be  entitled  to  recover  a  reasonable 
amount  for  attorney's  fees,  to  be  paid  by  the  party  or 
parties  hold  liable  therein. 


522  APPENDIX  H. 

Sec.  7353.  No  action  shall  be  maintained  under  the 
provisions  of  this  act  by  any  person  claiming  the 
exclusive  right  to  any  trademark  which  is  used  or 
claimed  in  unj  unlawful  business,  or  upon  any  article 
which  is  injurious  in  itself,  or  upon  any  trademark 
which  has  been  fraudulently  obtained,  or  which  has 
been  formed  and  used  with  the  design  of  deceiving  the 
public  in  the  purchase  or  use  of  any  article  of  merchan- 
dise. 

Sec.  7354.  Any  person  who  shall  procure  the  registry 
of  any  trademark,  or  of  himself  as  the  owner  of  a  trade- 
mark, by  making  false  or  fraudulent  representations  or 
declarations,  verbally  or  in  writing,  or  by  any  fraudu- 
lent means,  shall  be  liable  to  pay  any  damages  sustained 
in  consequence  thereof  to  the  person  injured  thereby. 

Sec.  7355.  Nothing  in  this  act  shall  prevent,  lessen, 
impeach  or  avoid  any  remedy  at  law,  or  in  equity,  which 
any  party  aggrieved  by  any  wrongful  use  of  any  trade- 
mark might  have,  if  the  provisions  of  this  act  had  not 
been  enacted,  and  nothing  in  this  act  contained  shall  be 
construed  by  any  court  as  abridging,  or  in  any  manner 
affecting  unfavorably,  the  claim  of  any  person  to  any 
trademark  after  the  expiration  of  the  term  for  which 
such  trademark  was  registered. 

Act  March  31,  1883. 

An  act  approved  April  20,  1895,  is  entitled  '*An  act  to 
provide  for  the  registration  of  brands,  trademarks,  etc., 
of  boxes,  fountains,  sjqohons,  bottles  or  other  recepta- 
cles of  carbonated  goods,  and  prescribing  penalties  for 
violation  of  said  act." 

A  synopsis  of  its  contents  is  as  follows: 
Section  1.  Manufacturers  or  dealers  in  carbonated 
goods  may  file  in  office  of  county  clerk  a  fac-simile  of 
mark,  brand,  etc.,  used  on  goods.  Fee  of  $1.00  for  such 
recording.  Description,  fac-simile,  etc.,  to  be  published 
for  three  weeks,  and  gives  protection  as  a  trademark. 


STATE   TRADEM.VRK    STATUTES.  523 

Sec.  2.  Unlawful  to  fill  any  bottle,  etc.,  marked  with 
registered  brand,  or  to  obliterate  such  mark. 

Sec.  3.  To  sell  such  bottles,  except  by  contract  or 
permission  of  manufacturer,  a  misdemeanor.  Employee 
equally  liable  with  princii)al  so  offending. 

Sec.  4.     Penalty.     Fines  for  each  offense. 

Sec.  5.  Prosecutions  may  be  made  utx)n  infonnation 
by  owner  or  manufacturer  or  agent.  Information. 
How  given.  What  to  state.  Justice  to  issue  search  war- 
rant.   If  goods  are  found,  officer  to  arrest  parties. 

Sec.  6.  Purchaser  of  contents  to  return  bottles,  ves- 
sels, etc.  If  return  is  demanded  by  manufacturer  or 
owner  before  vessels  are  empty,  owner  to  refund  price 
of  contents  paid. 

Sec.  7.  Fines  under  this  act  to  be  turned  into  county 
treasury. 

Sec.  8.  Repeals  laws  in  conflict.  Act  takes  effect 
from  passage. 


CALIFORNIA. 

POLITICAL  CODE. 

Section  3196.  The  phrase  "trademark"  as  used  in 
this  chapter  includes  every  description  of  word,  letter, 
device,  emblem,  stamp,  imprint,  brand,  printed  ticket, 
label,  or  wrapper  usually  affixed  by  any  mechanic,  manu- 
facturer, druggist,  merchant,  or  tradesman,  to  denote 
any  goods  to  be  goods  imported,  manufactured,  pro- 
duced, compounded  or  sold  by  him,  other  than  any 
name,  word,  or  expression  generally  denoting  any  goods 
to  be  of  some  particular  class  or  description,  and  also 
any  name  or  names,  marks  or  devices,  branded, 
stamped,  engraved,  etched,  blown,  or  otherwise  attached 
or  produced  upon  any  cask,  keg,  bottle,  vessel,  siphon,  can, 
case,  or  other  package  used,  by  any  mechanic  manufac- 
turer, druggist,  merchant  or  tradesman,  to  hold,  contain 


524  APPENDIX  H. 

or  inclose  the  goods  so  imported,  manufactured,  pro- 
duced, compounded  or  sold  by  him,  other  than  any 
name,  word  or  expression  generally  denoting  any  goods 
to  be  of  some  particular  class  or  description.  [Amend- 
ment approved  March  3,  1903.] 

Sec.  3197.  Any  person  may  record  any  trademark 
or  name  by  filing  with  the  Secretary  of  State  his  claim 
to  the  same,  and  a  copy  or  description  of  such  trade- 
mark or  name,  with  his  affidavit  attached  thereto,  certi- 
fied to  by  any  officer  authorized  to  take  acknowledg- 
ments of  conveyances,  setting  forth  that  he  (or  the  firm 
or  corporation  of  which  he  is  a  member)  is  the  exclusive 
owner,  or  agent  of  the  owner,  of  such  trademark  or 
name.     [Amendment  approved  March  12,  1885.] 

66  Cal.  78;  102  CaL  44. 

Sec.  3198.  The  Secretary  of  State  must  keep  for  pub- 
lic examination  a  record  of  all  trademarks,  or  names 
filed  in  the  office,  with  the  date  when  filed  and  name  of 
claimant;  and  must,  at  time  of  filing,  colleci  from  such 
claimant  a  fee  of  three  dollars  in  gold  coin,  to  be  paid 
into  the  State  Library  Fund.     [Stats.  1863,  p.  155.] 

Note. — Fee  for  filing  and  issuing  certificate  is  $5.00.  See  amend- 
ment to  fee  bill,  Political  Code,  §416,  subdivision  15  (Statutes  of  1903, 
page   27). 

Sec.  3199.  Any  person  who  has  first  adopted  and 
used  a  trademark  or  name,  whether  within  or  beyond  the 
limits  of  this  state,  is  its  original  owner.  Such  owner- 
ship may  be  transferred  in  the  same  manner  as  personal 
property  and  is  entitled  to  the  same  protection  by  suits 
at  law,  and  any  court  of  competent  jurisdiction  may 
restrain,  by  injunction,  any  use  of  trademarks,  or 
names,  in  violation  of  this  chapter. 

Sec.  3200.  Any  trade  union,  labor  association,  or 
labor  organization,  organized  and  existing  in  this  state, 
whether  incorporated  or  not,  may  adopt  and  use  a  trade- 
mark and  affix  the  same  to  any  goods  made,  produced 


STATE   TRADEMARK   STATUTES.  525 

or  manufactured  by  the  members  of  such  trade  union, 
labor  association,  or  labor  organization,  or  to  the  box, 
cask,  case,  or  package  containing  such  goods,  and  may 
record  such  trademark  by  filing  or  causing  to  be  filed 
with  the  secretaiy  of  state  its  claim  to  the  same,  and  a 
copy  or  description  of  such  trademark,  with  the  affidavit 
af  the  president  of  such  trade  union,  labor  association, 
or  labor  organization,  certified  to  by  any  officer  autlior- 
ized  to  take  acknowledgements  of  conveyances,  setting 
forth  that  the  trade  union,  labor  association,  or  labor 
organization,  of  which  he  is  the  president,  is  the  exclu- 
sive owmcr,  or  agent  of  the  owner,  of  such  trademark ; 
and  all  the  provisions  of  Article  III.,  Chapter  VII.,  Title 
VII.,  Part  III.,  of  the  Political  Code,  are  hereby  made 
applicable  to  such  trademark. 

Sec.  3201.  The  president  or  other  presiding  officer  of 
any  trade  union,  labor  association,  or  labor  organization, 
organized  and  existing  in  this  state,  which  shall  have 
complied  with  the  provisions  of  the  preceding  section, 
is  hereby  authorized  and  empowered  to  commence  and 
prosecute  in  his  own  name  any  action  or  proceedings  he 
may  deem  necessary  for  the  protection  of  any  trade- 
mark adopted  or  in  use  under  the  ]n'ovisions  of  the  pre- 
ceding section,  or  for  the  protection  or  enforcement  of 
any  rights  or  powers  which  may  accrue  to  such  trade 
union,  labor  association,  or  labor  organization  by  the 
use  or  adoption  of  said  trademark. 

CIVIL    CODE. 

Section  655.  There  may  be  ownership  of  all  inani- 
mate things  which  are  capable  of  appropriation  or  of 
manual  delivery;  of  all  domestic  animals;  or  all  obliga- 
tions ;  of  such  products  of  labor  or  skill  as  the  composi- 
tion of  an  author,  the  good-will  of  a  business,  trade- 
marks and  signs,  and  of  rights  created  or  granted  by 
statute. 


526  APPENDIX  H. 

Sec.  991.  One  who  produces  or  deals  in  a  particu- 
lar tbing,  or  conducts  a  particular  business,  may  appro- 
priate to  liis  exclusive  use,  as  a  trademark,  any  form, 
symbol  or  name,  which  has  not  been  so  appropriated  by 
another,  to  designate  the  origin  or  ownership  thereof, 
but  he  cannot  exclusively  appropriate  any  designation, 
or  part  of  a  designation,  which  relates  only  to  the  name, 
quality  or  the  description  of  the  thing  or  business,  or  the 
place  where  the  thing  is  produced  or  the  business  is  car- 
ried on. 

Sec.  1772.  One  who  sells  or  agrees  to  sell  any  article 
to  which  there  is  affixed  or  attached  a  trademark  there- 
by warrants  that  mark  to  be  genuine  and  lawfully  used. 

PENAL    CODE. 

Sec.  350.  Every  person  who  wilfully  reproduces, 
copies,  imitates,  forges,  or  counterfeits,  or  procures  to 
be  reproduced,  copied,  imitated,  forged,  or  counterfeited, 
any  trademark  usually  affixed  by  any  person  to  his 
goods,  which  has  been  duly  recorded  in  the  office  of  the 
Secretary-  of  State,  or  with  the  Commissioner  of  Patents 
in  the  United  States  Patent  Office,  or  any  label  or  brand, 
composed  in  whole  or  in  part  of  a  reproduction  of  said 
trademark,  or  who  affixes  the  same  to  goods  of  essen- 
tially the  same  descriptive  properties  and  qualities  as 
those  referred  to  in  the  registration  of  such  trademark, 
with  intent  to  pass  off,  or  to  assist  other  persons  to 
pass  off,  any  goods  to  which  such  reproduced,  copied, 
imitated,  forged,  or  counterfeited  trademark,  or  label, 
or  brand  is  affixed,  or  intended  to  be  affixed,  as  the 
goods  of  the  person,  firm,  company,  or  corporation  own- 
ing the  said  trademark,  is  guilty  of  a  misdemeanor. 
[Approved  March  27,  1897.] 

Sec.  351.  Every  person  who  sells,  or  keeps  for  sale, 
or  manufactures  or  prepares,  for  the  purpose  of  sale, 
any  goods  upon,   or  to  which  any  reproduced,  copied. 


STATE   TR.VDEMARK   STATUTES.  527 

imitated,  forged,  or  counterfeited  trademark,  or  label, 
or  brand,  composed  in  whole  or  in  part  of  such  a  repro- 
duced, copied,  imitated,  forged,  or  counterfeited  trade- 
mark has  been  affixed,  after  such  trademark  has  been 
recorded  in  the  office  of  the  Secretary  of  State,  or  with 
the  commissioner  of  patents  in  the  United  States  Patent 
Office,  intending  to  represent  such  goods  as  the  genuine 
goods  of  the  person,  firm,  company,  or  corporation  own- 
ing the  said  trademark,  knowing  the  same  to  be  repro- 
duced, copied,  imitated,  forged,  or  counterfeited,  is 
guilty  of  a  misdemeanor.     [Approved  March  27,  1897.] 

Sec.  352.  The  phrases  "forged  trademarks"  and 
"counterfeited  trademarks,"  or  their  equivalents,  as 
used  in  this  chapter,  include  every  alteration  or  imita- 
tion of  any  trademark  so  resembling  the  original  as  to 
be  likely  to  deceive. 

Sec.  353.  The  phrase  "trademark,"  as  used  in  the 
three  preceding  sections,  includes  every  description  of 
word,  letter,  device,  emblem,  stamp,  imprint,  brand, 
printed  ticket,  label,  or  wrapper,  usually  affixed  by  any 
mechanic,  manufacturer,  druggist,  merchant,  or  trades- 
man, to  denote  any  goods  to  be  goods  imported,  manu- 
factured, produced,  compounded,  or  sold  by  him,  other 
than  any  name,  word,  or  expression  generally  denot- 
ing any  goods  to  be  of  some  particular  class  or  descrip- 
tion. 

Sec.  354.  Every  person  who  has  in  his  possession, 
or  who  uses  any  cask,  bottle,  vessel,  case,  cover,  label, 
brand,  or  other  thing  bearing,  or  having  in  any  way 
connected  with  it,  the  trademark  of  another,  which  has 
been  duly  recorded  in  the  office  of  the  Secretary  of  State, 
or  with  the  commissioner  of  patents  in  the  United  States 
Patent  Office,  or  the  trade  name  of  another,  for  the  pur- 
pose of  disposing  of  any  article  other  than  that  which 
such  cask,  bottle,  vessel,  case,  cover,  label,  brand,  or 
other  thing  originally  contained,  or  is  connected  with  by 
the  owner  of  such  trademark  or  trade  name,  with  intent 
to  deceive  or  defraud,  is  guilty  of  a  misdemeanor. 


528  APPENDIX  H. 

Sec.  354  a.  Eveiy  person  who  wilfully  sells,  or  traf- 
fics in  any  cask,  keg,  bottle,  vessel,  siphon,  can,  case,  or 
other  package  bearing  the  duly  filed  trademark  or  name 
of  another,  printed,  branded,  stamped,  engraved,  etched, 
blown  or  otherwise  attached  or  produced  thereon,  or 
refills  any  such  cask,  keg,  bottle,  vessel,  siphon,  can, 
case,  or  other  package  with  intent  to  defraud  the  owner 
thereof,  without  the  consent  of  the  owner  thereof,  or 
unless  the  same  shall  have  been  purchased  from  the 
owner  thereof,  is  guilty  of  a  misdemeanor. 

Sec.  354  h.  Every  person  who  shall  wilfully  deface, 
erase,  obliterate,  cover  up,  or  otherwise  remove,  destroy, 
or  conceal  the  duly  filed  trademark,  or  name  of  another, 
printed,  branded,  stamped,  engraved,  etched,  blown, 
impressed,  or  othenvise  attached  to,  or  produced  upon 
any  cask,  keg,  bottle,  vessel,  siphon,  can,  case,  or  other 
package,  for  the  pupose  of  selling,  or  trafficing  in  such 
cask,  keg,  bottle,  vessel,  siphon,  can,  case,  or  other  pack- 
age, or  refilling  such  cask,  keg,  bottle,  vessel,  siphon, 
can,  case,  or  other  package,  with  intent  to  defraud  the 
owner  thereof,  without  the  consent  of  the  owner,  or 
unless  the  same  shall  have  been  purchased  from  the 
owner,  is  guiltj^  of  a  misdeameanor. 

Sec.  991.  Civil  Code,  provides  that  "one  who  con- 
ducts a  particular  business  may  appropriate  to  his  exclu- 
sive use  as  a  trademark  any  form,  symbol,  or  name, 
which  has  not  been  so  appropriated  by  another  to  desig- 
nate the  origin  or  ownership  thereof."  Under  this  sec- 
tion, the  name  "Cyclops  Machine  Works"  has  been  pro- 
tected against  infringement,  although  used  only  as  the 
name  of  a  machine  shop,  and  not  as  a  trademark.^ 

The  Act  of  March  31,  1891,  amended  March  5,  1903, 
is  entitled  "An  act  to  protect  the  owners  of  bottles, 
boxes,  siphons  and  kegs  used  in  the  sale  of  soda  waters, 
mineral    or    aerated    waters,    porter,    ale,    cider,    ginger 

1 — Hainque  v.  Cyclops  Iron  Works,  136  Cal.  351,  68  Pac.  Rep.  1014. 


STATE  TRADEMARK  STATUTES.  529 

ale,  milk,  cream,  small  beer,  lager  beer,  weiss  beer,  beer, 
white  beer,  or  other  beverages." 

The  secretary  of  state  has  prescribed  the  following 
fonn  for  applications  for  registration: 


State  of  California,  I 
County  of  ,       j 

,  being  duly  sworn,  deposes  and  says  that  he  is located 

and  doing  business  in  the  ,  State  of  California.     That  the  said 

is   the   exclusive  owner  of   the   trademark   described   in   the 

specification  accompanying  this  affidavit,  and  he  petitions  that  the 
said  trademark  may  be  filed  in  the  office  of  the  Secretary  of  State 
of  the  State  of  California,  in  accordance  with  the  law  in  such  cases 
made  and  provided. 


Subscribed   and    sworn    to   before    me,    this   day   of 

19— 


Notary  Public  in  and  for  the  said  ,  State  of  California. 


SPECIFICATION. 

To  all  whom  it  may  concern: 

Be   it    known    that   of   ,    State    of    California,    being 

engaged  in  the  business  of  ,  adopted  for  use   a 

trademark,  of  which  the  following  is  a  description: 

This  trademark  consists  . 

It  has  generally  been  arranged  as  shown  in  the  accompanying  fac- 
simile,   . 

(Space   for  attaching  label.) 

This  trademark  has  been  used  in  its  business  since  the day 

of  ,  . 

The  class  of  merchandise  and  the  particular  goods  upon  which  the 
trademark  is  used  is  . 

It  has  been  the  custom  to  imprint  it  upon  . 

Witnesses: 


33 


530  APPENDIX  H. 


COLORADO. 

AN  ACT  to  confer  exclusive  rights  to  the  use  of  labels,  trademarks, 
terms,  designs,  devices  or  forms  of  advertisement  and  provide 
for  the  recording  of  the  same,  to  provide  a  remedy  for  the  viola- 
tion of  such  right,  and  the  penalty  for  the  unlawful  use  of  labels, 
trademarks,  terms,  designs,  devices  and  forms  of  advertising,  and 
to  repeal  all  acts  and  parts  of  acts  inconsistent  herewith. 

Be  it  enacted  by  the  General  Assembly  of  the  State  of 
Colorado : 

Section  1.  "^AHienever  any  person,  or  any  association 
or  union  of  workingmen,  has  heretofore  adopted  or 
used,  or  shall  hereafter  adopt  or  nse,  any  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement  for 
the  purpose  of  designating,  making  known,  or  distin- 
guishing any  goods,  wares,  merchandise  or  other  product 
of  labor,  as  having  been  made,  manufactured,  produced, 
prepared,  packed  or  put  on  sale  by  such  person  or  asso- 
ciation or  union  of  workingmen  or  by  a  member  or 
members  of  such  association  or  union,  it  shall  be  unlaw- 
ful to  counterfeit  or  imitate  such  label,  trademark,  term, 
design,  device  or  form  of  advertisement,  or  to  use,  sell, 
offer  for  sale  or  in  any  way  utter  or  circulate  any 
counterfeit  or  imitation  of  any  such  label,  trademark, 
term,  design,  device  or  form  of  advertisement. 

Sec.  2.  A^Hioever  counterfeits  or  imitates  any  such 
labels,  trademark,  term,  design,  device  or  form  of  ad- 
vertisement; or  sells,  offers  for  sale  or  in  any  way 
utters  or  circulates  any  counterfeit  or  imitation  of  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement;  or  keeps  or  has  in  his  possession  with 
intent  that  the  same  shall  be  sold  or  disposed  of,  any 
goods,  wares,  merchandise  or  other  product  of  labor  to 
which  or  on  which  any  such  counterfeit  or  imitation 
is  printed,  painted,  stamped  or  impressed ;  or  knowingly 
sells  or  disposes  of  any  goods,  wares,  merchandise  or 
other  product  of  labor  contained  in  any  box,  case,  can 


STATE  TRADEMARK   STATUTES.  531 

or  package,  lo  wliicli  or  on  whioli  any  such  counterfeit 
or  imitation  is  attached,  affixed,  printed,  painted, 
stamped  or  impressed;  or  keeps  or  has  in  his  possession 
with  intent  that  the  same  shall  be  sold  or  disposed  of, 
any  goods,  wares,  merchandise  or  other  products  of 
labor  in  any  box,  case,  can  or  package  to  which  or  on 
which  any  such  counterfeit  or  imitation  is  attached, 
affixed,  printed,  painted,  stamped  or  impressed  shall 
be  punished  by  a  fine  of  not  more  than  five  hundred 
dollars  ($500),  or  by  imprisonment  for  not  more  than 
three  months,  or  by  both  such  fine  and  imprisonment. 

Sec.  3.  Every  such  person,  association  or  union  that 
has  heretofore  adopted  or  used,  or  shall  hereafter  adopt 
or  use,  a  label,  trademark,  term,  design,  device  or  form 
of  advertisement  as  provided  in  section  1  of  this  act, 
may  file  the  same  for  record  in  the  office  of  the  Secre- 
tary of  State  by  leaving  two  copies,  counterparts  or  fac- 
similes thereof,  with  said  Secretary  and  by  filing  there- 
with a  sworn  application  specifying  the  name  or  names 
of  the  person,  association  or  union  on  whose  behalf  such 
label,  trademark,  term,  design,  device  or  form  of  adver- 
tisement shall  be  filed;  the  class  of  merchandise  and 
description  of  the  goods  to  which  it  has  been  or  is  in- 
tended to  be  appropriated  stating  that  the  party  so 
filing  or  on  whose  behalf  such  label,  trademark,  term, 
design,  device  or  form  of  advertisement  shall  be  filed, 
has  the  right  to  the  use  of  the  same;  that  no  other  per- 
son, firm,  association,  union  or  corporation  has  the  right 
of  such  use,  either  in  the  identical  form  or  in  any  such 
near  resemblance  thereto  as  may  be  calculated  to  deceive 
and  that  the  fac-simile  or  counterparts  filed  therewith  are 
true  and  correct.  There  shall  be  ])aid  for  such  filing 
and  recording  a  fee  of  one  dollar.  Said  Secretary  shall 
deliver  to  such  person,  association  or  union  so  filing  or 
causing  to  be  filed  any  such  label,  trademark,  term,  de- 
sign, device  or  fonn  of  advertisement,  so  many  duly 
attested  certificates  of  the  recording  of  the  same  as  such 


532  APPENDIX  n. 

person,  association  or  union  may  apply  for,  for  each  of 
which  certificates  said  Secretary  shall  receive  a  fee  of 
one  dollar.  Any  such  certificate  of  record  shall  in  all 
suits  and  prosecutions  under  this  act  be  sufficient  proof 
of  the  adoption  of  such  label,  trademark,  term,  design, 
device  or  form  of  advertisement.  Said  Secretary  of 
State  shall  not  record  for  any  person,  union  or  associa- 
tion any  label,  trademark,  term,  design,  device  or  form 
of  advertisement  that  would  probably  be  mistaken  for 
any  label,  trademark,  term,  design,  device  of  form  of 
advertisement  theretofore  filed  by  or  on  behalf  of  any 
other  person,  union  or  association.  But  the  said  Secre- 
tary shall  file  and  record  under  this  act  any  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement, 
which  may  have  been  previously  filed  by  any  person,  or 
any  association  or  union  of  workingmen,  provided  the 
person,  association  or  union  seeking  to  file  and  record 
under  this  act  is  the  same  person,  association  or  union 
that  previously  filed  or  recorded  the  same  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement. 

Sec.  4.  Any  person  who  shall  for  himself  or  on  be- 
half of  any  other  person,  association  or  union  procure 
the  filing  of  any  label,  trademark,  term,  design,  or  form 
of  advertisement  in  the  office  of  the  secretary  of  state 
under  the  provisions  of  this  act,  by  making  any  false  or 
fraudulent  representations,  or  declarations,  verbally  or 
in  writing,  or  by  any  fraudulent  means,  shall  be  liable 
to  pay  any  damages  sustained  in  consequence  of  any 
such  filing,  to  be  recovered  by  or  on  behalf  of  the  party 
injured  thereby  in  any  court  having  jurisdiction  and 
shall  be  punished  by  a  fine  not  exceeding  five  hundred 
dollars  ($500)  or  by  imprisonment  not  exceeding  three 
months,  or  by  both  such  fine  and  imprisonment. 

Sec.  5.  Every  such  person,  association  or  union 
adopting  or  using  a  label,  trademark,  term,  design,  de- 
vice or  form  of  advertisement  as  aforesaid,  may  proceed 
by   suit   for   damages   to   enjoin   the   manufacture,  use, 


STATE  TRADEMAEK  STATUTES.  533 

display  or  sale  of  any  counterfeits  or  imitations  thereof 
and  all  courts  of  competent  jurisdiction  shall  grant  in- 
junction to  restrain  such  manufacture,  use,  display  or 
sale  and  award  the  complainant  in  any  such  suit  dam- 
ages resulting  from  such  manufacture,  use,  sale  or  dis- 
play as  may  be  by  the  said  court  deemed  just  and  rea- 
sonable, and  shall  require  the  defendant  to  pay  to  such 
person,  association  or  union  all  profits  derived  from  such 
wrongful  manufacture,  use,  display  or  sale ;  and  such 
court  shall  also  order  that  all  such  counterfeits  or  imi- 
tations in  the  possession  or  under  the  control  of  any 
defendant  in  such  cause  be  delivered  to  an  officer  of  the 
court,  or  to  the  complainant  to  be  destroyed. 

Sec.  6.  Every  person  who  shall  use  or  display  the 
genuine  label,  trademark,  term,  design,  device  or  form 
of  advertisement  of  any  such  person,  association  or 
union  in  any  manner,  not  being  authorized  so  to  do  by 
such  person,  union  or  association,  shall  be  deemed  guilty 
of  a  misdemeanor  and  shall  be  punished  by  imprison- 
ment for  not  more  than  three  months  or  by  a  fine  of  not 
more  than  five  hundred  dollars  ($500). 

In  all  cases  where  such  association  or  union  is  not 
incorporated,  suits  under  this  act  may  be  commenced 
and  prosecuted  by  an  officer  or  member  of  such  associa- 
tion or  union  on  behalf  of  and  for  the  use  of  such  asso- 
ciation or  union. 

Sec.  7.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  person,  association  or 
union  or  officer  thereof  in  and  about  the  sale  of  goods  or 
otherwise,  not  being  authorized  to  so  use  the  same,  shall 
be  guilty  of  a  misdemeanor,  and  shall  be  punishable  by 
imprisonment  for  not  more  than  three  months,  or  by  a 
fine  or  not  more  than  five  hundred  dollars  ($500). 

Sec.  8.  In  case  the  plaintiff  is  successful  in  maintain- 
ing his  action  either  for  damages  or  for  permanent 
relief  by  injunction,  or  for  nominal  damages  only,  he 
shall  be  entitled  to  recover  a  reasonable  attorney's  fee, 


534  ^VPPENDIX  H. 

to  be  taxed  by  the  court  as  a  part  of  the  costs,  and 
merged  in  the  judgment. 

Sec.  9.  All  acts  and  parts  of  acts  inconsistent  here- 
with are  hereby  repealed;  provided,  that  this  act  shall 
not  be  construed  as  impairing  any  rights  heretofore 
accrued,  nor  as  affecting  the  remedies  therefor  hereto- 
fore existing. 

Approved  April  10,  1899. 


FORM    FOR    APPLICATION    FOR    REGISTRATION. 


19—. 


To  the  Honorable  the  Secretary  of  State  of  the  State  of  Colorado: 

1,  ,   being  desirous  of  availing  myself   of  the  provisions  of 

An  Act  of  the  Legislature  of  the  State  of  Colorado,  in  relation  to 
trademarks  and  labels,  approved  April  10,  1899,  have  adopted  a  certain 
trademark  for  the  purpose  of  designating  and  distinguishing  a  certain 
article  in  manner  and   form  as   follows,   viz.:   

That  the  said  has  the  right  to  use  the  same  and  that  no 

other  person,  firm,  association,  union  or  corporation  has  the  right  to 
use  the  same,  either  in  the  identical  form  or  in  any  such  near 
resemblance  thereto  as  may  be  calculated  to  deceive,  and  that  the  fac- 
similes or  counterparts  filed  herewith  are  true  and  correct. 


State  of  ,        „„. 

oo  • 


On   this  day  of  ,   A.   D.   19 — ,   before  me  personally 

appeared  the  above  named  ,  to  me  personally  known,  and  made 

oath  that  the  foregoing  statement  by  him  subscribed  is  true  and 
correct. 

My  commission  expires  . 


Notary  Public. 


STATE   TRADEMARK    STATUTES-  535 

CONNECTICUT. 

General  Statutes,  Revision  of  1902. 

Section  4899.  IIecord  of  certificate.  Every  person 
entitled  to  the  exclusive  use  of  any  trademark,  or  who 
intends  to  adopt  and  use  any  trademark  not  previously 
adopted  or  used  by  another,  may  file  for  record  in  the 
office  of  the  Secretary  of  State  a  certificate  setting  forth : 
his  name,  residence  and  place  of  business;  the  class  of 
merchandise,  and  the  particular  description  of  goods 
comprised  in  such  class,  to  which  such  trademark  has 
been  or  is  to  be  appropriated;  a  description  of  such 
trademark,  and  of  the  mode  in  which  it  is  to  be  applied 
and  used;  the  date  when  such  trademark  was  first  used 
or  adopted ;  that  he  has  a  right  to  the  use  of  it ;  and  thai 
no  other  person  has  the  right  to  such  use,  either  in  the 
identical  form,  or  having  such  near  resemblance  thereto 
as  might  be  calculated  to  deceive.  A  fac-simile  of  such 
trademark  shall  be  incoi'porated  in  or  annexed  to  such 
certificate,  and  a  duplicate  shall  be  filed  therewith,  to 
be  pasted  or  bound  into  the  record-book,  if  practicable. 
Such  certificate  shall  be  signed  by  the  person  in  whose 
behalf  it  is  filed,  or  by  his  agent,  and  the  person  so 
signing  it  shall  make  oath  or  affirm  that  all  the  state- 
ments therein  contained  are  true  to  the  best  of  his 
knowledge  and  belief. 

Sec.  4900.  Liability  for  false  swearing.  Every  per- 
son who  shall  wilfully  swear  or  affirm  falsely,  in  any 
such  affirmation  or  affidavit,  as  to  any  matter  therein 
required  to  be  set  forth,  shall  be  guilty  of  perjury,  and 
shall  pay  treble  damages  to  every  party  injured  thereby. 

Sec.  4901.  Mandamus  to  compel  record.  If  the  secre- 
tary of  state  has  reason  to  apprehend,  on  the  filing  of 
any  such  certificate,  that  the  statements  therein  con- 
tained, or  any  of  thorn,  are  untrue,  he  may  decline  to 
record  the  same,  unless  the  party  filing  it  shall  obtain 


536  APPENDIX  H. 

a  writ  of  mandamus  to  compel  such  recording.  Sucli 
writ  may  be  granted,  but  without  costs  to  the  Secretary, 
by  any  proper  court,  on  due  proof  that  all  the  state- 
ments in  such  certificate  are  true,  but  no  final  hearmg 
on  the  application  therefor  shall  be  had  until  such  notice 
thereof  as  said  court  may  order  has  been  advertised 
in  one  or  more  newspapers  published  in  the  county 
where  the  party  filing  such  certificate  resides.  Any 
persons  who  desire  may  appear  and  intervene  as  de- 
fendants and  oppose  the  granting  of  such  writ,  and 
shall  be  liable  to  judgment  for  any  costs  occasioned  by 
fiuch  intervention. 

Sec.  4902.  Effect  of  recording.  Every  person  hav- 
ing the  right  to  make  and  file  such  a  certificate  and  affi- 
davit, upon  the  recording  of  the  same  in  said  office,  shall 
be  entitled  to  the  exclusive  use  of  the  trademark  therein 
described  for  so  long  as  he  or  his  assigns  shall  continue 
to  be  engaged  in  the  manufacture  or  sale  of  the  mer- 
chandise or  description  of  goods  to  which  it  is  appro- 
priated; and  such  right  shall  be  assignable  in  writing, 
but  all  assignments  thereof  shall  be  good  only  against 
the  assignor  and  his  personal  representatives  until 
lodged  for  record  in  said  office. 

Sec.  4903.  Copies  prima  facie  evidence.  The  secre- 
tary shall  retain  all  such  certificates  on  file,  and  cause 
the  same  and  all  assignments  of  trademark  rights  to  be 
recorded  at  length  in  his  office.  Copies  of  the  record  of 
any  such  certificate  attested  by  him  under  the  seal  of 
the  state,  shall  be  prima  facie  evidence  of  the  right  of 
the  party  filing  such  certificate  to  the  exclusive  use  of 
the  trademark  therein  described  for  the  periods  limited 
in  Sec.  4902. 

Sec.  4904.  Counterfeit  or  imitation.  Every  person 
who  shall  reproduce,  copy,  counterfeit,  or  imitate  any 
such  recorded  trademark,  knowing  the  same  to  have 
been  recorded,  and  affix  such  reproduction,  copy,  coun- 
terfeit, or  imitation  to  goods  resembling  or  designed  to 


STATE  TRADEMARK  STATUTES.  537 

resemble  those  to  which  such  trademark  is  so  appro- 
priated, shall  pay  to  the  owner  of  such  trademark  double 
damages,  and  also  such  sum,  not  more  than  five  hundred 
dollars,  as  the  court  before  which  the  action  is  brought 
may  order  to  be  added  to  the  damages  found  by  the  ver- 
dict or  judgment. 

Sec.  4905.  Existing  rights  not  affected.  The  provi- 
sions of  this  chapter  shall  not  abridge  any  rights  to  any 
trademarks  existing  on  the  twenty-second  day  of  April, 
1880,  whether  the  same  shall  be  recorded  or  not,  nor  any 
remedies  or  rights  of  action  otherwise  or  theretofore  ex- 
isting in  favor  of  owners  of  trademarks. 

Sec.  4906.  Use  wit^  intent  to  deceive.  Every  per- 
son who  fraudulently  and  with  intent  to  deceive,  affixes 
any  trademark  recorded  under  this  chapter,  or  any  such 
imitation  thereof  as  is  calculated  to  deceive,  to  any 
goods,  receptacle,  or  package  similar  in  descriptive 
properties  to  those  to  ^hich  such  trademark  is  appro- 
priated; or  who  fraudulently  and  with  intent  to  deceive 
places  in  any  receptacle  or  package  to  which  is  lawfully 
affixed  a  recorded  trademark,  goods  other  than  those 
which  said  trademark  is  designed  and  appropriated  to 
protect;  or  who  fraudulently  and  with  intent  to  deceive, 
deals  in  or  keeps  for  sale  any  goods  with  a  trademark 
fraudulently  affixed  as  above  described  in  this  section, 
or  any  goods  contained  in  any  package  or  receptacle 
having  a  lawful  trademark,  which  are  not  such  goods  as 
such  trademark  was  designed  and  appropriated  to  pro- 
tect, shall  be  fined  not  more  than  five  hundred  dollars,  or 
imjn-isoned  not  more  than  thirty  days,  or  both. 

Devices  on  Bottles,  Siphons  and  Boxes  are  protected 
by  sections  4913  to  4918  inclusive. 

FORM  FOR  APPLICATION    FOR   REGISTRATION. 

Know  all  men  hy  these  presents: 

That  ,  residing  in  the  town  of  ,  county  of  .  and 

State  of  ,  and   having  place  of  business  in  and 


538  .VPPENDIX  H. 

engaged  in  the  and  sale  of  ,  ha —  adopted  the  following 

trademark,  to  be  applied  by  label,  or  by  engraving,  or  stamping  said 
trademark  upon  said  goods  or  the  packages  containing  them,  or  in 
advertising  the  same. 

(Here    insert    trademark    if    possible,    and    send    extra   copies    for 
record  and  certified  copies,  or  accurately  describe.) 

And  further  certify  that  said  trademark  was  first  used  by 

on  or  about  the day  of ,  A.  D.  19 — ,  and  that 


have  the  exclusive  right  to  the  use  of  the  same. 
State  of  ,  County  of  .  ss: 


-,  19— 


Personally  appeared,   ,  and   made  oath   to   the  truth  of  the 

foregoing  certificate,  before  me. 


Notary  Public.    Justice  of  the  Peace. 

DELAWARE. 

Chapter  699,  Volume  19,  Laws  of  Delaware. 

[Page  552,  Code  of  1893.] 

AN  ACT  to  protect  associations  and  unions  of  workingmen  and  persons 
in  their  labels,  trademarks  and  forms  of  advertising. 

Be  it  enacted  hy  the  Senate  and  House  of  Representa- 
tives of  the  State  of  Delaware  in  General  Assembly 
met: 

Section  1.  Whenever  any  person,  association  or 
union  of  workingmen  have  adopted,  or  shall  hereafter 
adopt  for  their  protection,  any  label,  trademark,  or  form 
of  advertisement  announcing  that  goods  to  which  such 
label,  trademark,  or  form  of  advertisement  shall  be 
attached  were  manufactured  by  such  person,  or  by  a 
member  or  members  of  such  association  or  union,  it 
shall  be  unlawful  for  any  person  or  corporation  to  coun- 
terfeit or  imitate  such  label,  trademark,  or  form  of 
advertisement.  Every  person  violating  this  section 
shall,  upon  conviction,  be  punished  by  imprisonment  in 


STATE   TR.VDEMARK   STATUTES.  539 

the  county  jail  for  not  less  than  three  months  nor  more 
than  one  year,  or  by  a  fine  of  not  less  than  fifty  nor 
more  than  one  hundred  dollars  ($100),  or  both. 

Sec.  2.  Every  person  who  shall  use  any  counterfeit 
or  imitation  of  any  label,  trademark,  or  fonn  of  adver- 
tisement of  any  such  j^erson,  union  or  association,  know- 
ing the  same  to  be  counterfeit  or  imitation,  shall  be 
guilty  of  a  misdemeanor,  and  shall  be  punished  by 
imprisonment  in  the  county  jail  for  not  less  than  three 
months  nor  more  than  one  year,  or  by  a  fine  of  not  less 
than  fifty  nor  more  [than]  one  hundred  dollars  ($100), 
or  both. 

Sec.  3.  Every  person,  association  or  union,  that  has 
heretofore  adopted,  or  shall  hereafter  adopt,  a  label, 
trademark,  or  form  of  advertisement  as  aforesaid,  may 
file  the  same  in  the  office  of  the  Secretary  of  State,  by 
leaving  two  copies,  counterparts  or  fac-similes  thereof 
with  the  secretary  of  state;  said  secretary  shall  deliver 
to  such  person,  association  or  union  so  filing  the  same  a 
duly  attested  certificate,  for  which  he  shall  receive  one 
dollar.  Such  certificate  of  filing  shall  in  all  suits  and 
prosecutions  under  this  act  be  sufficient  proof  of  the 
adoption  of  such  label,  trademark  or  form  of  advertise- 
ment, and  of  the  right  of  such  i:)erson,  association  or 
union  to  adopt  the  same.  No  label  shall  be  received  and 
filed  by  the  Secretary  of  State  that  probably  would  [be] 
mistaken  for  a  label  already  filed. 

Sec.  4.  Every  such  person,  association  or  union 
adopting  a  label,  trademark  or  form  of  advertisement, 
as  aforesaid,  may  proceed  by  suit  to  enjoin  the  manufac- 
ture, use,  display,  or  sale  of  any  such  counterfeits  or 
imitations,  and  all  courts  having  jurisdiction  thereof 
shall  grant  injunctions  to  restrain  such  manufacture, 
use,  display,  or  sale,  and  shall  award  the  complainant  in 
such  suit  such  damages,  resulting  from  such  wrongful 
manufacture,  use,  display  or  sale  as  may  by  said  court 
be  deemed  just  and  reasonable,  and  shall  require  the  de- 


540  APPENDIX  H. 

fendants  to  pay  to  such  person,  association  or  union  the 
profits  derived  from  such  wrongful  manufacture,  use, 
display  or  sale;  and  said  court  shall  also  order  that  all 
such  counterfeits  or  imitations  in  the  possession,  or 
under  the  control,  of  any  defendant  in  such  case  be  de- 
livered to  an  officer  of  the  court,  or  to  the  complainant, 
to  be  destroyed. 

Sec.  5.  Eveiy  person  who  shall  use  or  display  the 
genuine  label,  trademark,  or  form  of  advertisement  of 
any  such  person,  association  or  union  in  any  manner 
not  authorized  by  such  person,  union  or  association, 
shall  be  deemed  guilty  of  a  misdemeanor,  and  shall  be 
punished  by  imprisonment  in  the  county  jail  not  less 
than  three  months  nor  more  than  one  year,  or  by  fine  of 
not  less  than  fifty  nor  more  than  one  hundred  dollars, 
or  both.  In  all  cases  where  such  association  or  union 
is  not  incorporated,  suits  under  this  act  may  be  com- 
menced and  prosecuted  by  any  member  or  officer  of  such 
association  or  union  on  behalf  of  and  for  the  use  of 
such  association  or  union. 

Sec.  6.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  person,  association,  or 
union,  or  officer  thereof,  in  and  about  the  sale  of  goods, 
or  otherwise,  not  being  authorized  to  so  use  the  same, 
shall  be  guilty  of  a  misdemeanor,  punishable  by  impris- 
onment in  the  county  jail  of  not  less  than  three  months 
nor  more  than  one  year,  or  by  a  fine  of  not  less  than 
fifty  nor  more  than  one  hundred  dollars,  or  both. 

Sec.  7.  The  fines  provided  for  in  this  act  may  be  en- 
forced before  a  justice  of  the  peace  in  all  cases  where 
the  party  complainant  shall  so  elect,  and  in  case  of  con- 
viction before  such  justice  of  the  peace  the  offender 
shall  stand  committed  to  the  county  jail  until  the  fine 
and  costs  are  fully  paid. 

Sec.  8.  This  shall  be  deemed  and  taken  to  be  a  pub- 
lic act. 

Passed  at  Dover,  March  29,  1893. 


STATE   TRADEMARI>;   STATUTES.  541 

Chapter  92,  vol.  16,  Laws  of  Delaware  (Code  1893,  p.  551),  relates 
to  the  protection  of  manufacturers  and  vendors  of  mineral  water, 
porter,  ale,  or  other  beverages  against  the  unauthorized  use  of  or 
injury  to  their  bottles. 

Chapter  226,  p.  435,  of  the  Laws  of  Delaware  of  1898-1899.  relates 
to  the  protection  of  any  labor  organization  in  the  adoption  and  use  of 
a  label  or  seal. 


FLORIDA. 

CiiAPTEU  4974— (No.  90). 

AN  ACT  to  authorize  any  person,  association  or  union  of  workingmen 
to  adopt  and  use  a  label  or  trademark,  to  protect  the  same  by 
law,  to  provide  for  its  record,  to  prevent  counterfeiting  the  same, 
or  using  the  original  or  any  package  containing  the  same;  and  to 
prevent  using  the  name  or  seal  thereof  without  authority,  and 
fixing  penalties  for  violations  thereof. 

Be  it  enacted  by  the  Legislature  of  the  State  of  Florida: 
Section  1.  "WHienever  any  person  or  any  association  or 
union  of  workingmen  lias  heretofore  adopted  or  used,  or 
shall  hereafter  adopt  or  use,  and  has  filed  as  hereinafter 
provided,  any  label,  trademark,  tenn,  wording,  design, 
device,  color  or  form  of  advertisement  for  the  purpose 
of  designating,  making  known,  or  distinguishing  any 
goods,  wares,  merchandise  or  other  product  of  labor, 
as  having  been  made,  manufactured,  produced,  prepared, 
packed  or  put  on  sale  by  such  person  or  association  or 
union  of  workingmen,  or  by  a  member  or  members  of 
such  association  or  union,  it  shall  be  unlawful  to  coun- 
terfeit or  imitate  such  label,  trademark,  teiTii,  wording, 
design,  device,  color  or  form  of  advertisements,  or 
knowingly  to  use,  sell,  offer  for  sale,  or  in  any  other  way 
utter  or  circulate  any  counterfeit,  or  imitation  of  any 
such  label,  trademark,  term,  wording,  design,  device, 
color  or  form  of  advertisement. 

Sec.  2.  AVTioever  counterfeits  or  imitates  any  such 
label,  trademark,  term,  wording,  design,  device,  color 
or  form  of  advertisement,  or  knowingly  sells,  offers  for 


542  APPENDIX  H. 

sale,  or  in  any  way  utters  or  circulates  any  counterfeit 
or  imitation  of  any  such  label,  trademark,  term,  word- 
ing, design,  device,  color  or  form  of  advertisement;  or 
knowingly  purchases  and  keeps  or  has  in  his  possession, 
with  intent  that  the  same  shall  be  sold  or  disposed  of, 
any  goods,  wares,  merchandise  or  other  product  of  labor 
to  which  or  on  which  any  such  counterfeit  or  imitation 
is  printed,  painted,  stamped  or  impressed;  or  knowingly 
IDurchases  with  intent  to  sell  or  dispose  of  any  goods, 
wares,  merchandise  or  other  product  of  labor  contained 
in  any  box,  case,  can  or  package  to  which  or  on  which 
any  such  counterfeit  or  imitation  is  attached,  affixed, 
printed,  painted,  stamped  or  im23ressed;  or  having 
knowingly  purchased,  keeps  or  has  in  his  possession, 
with  intent  that  the  same  shall  be  sold  or  disposed  of, 
any  goods,  wares,  merchandise  or  other  product  of  la- 
bor in  any  box,  case,  can  or  package,  to  which  or  on 
which  any  such  counterfeit  or  imitation  is  attached, 
affixed,  printed,  painted,  stamped  or  impressed,  shall  be 
punished  by  a  fine  of  not  more  than  five  hundred  dol- 
lars, or  by  imprisonment  for  not  more  than  three 
months. 

Sec.  3.  Every  such  person,  association  or  union  that 
has  heretofore  adopted  or  used,  or  shall  hereafter  adopt 
or  use,  a  label,  trademark,  term,  wording,  design,  device, 
color  or  foim  of  advertisement  as  provided  in  section  1 
of  this  act,  may  file  the  same  for  record  in  the  office  of 
Secretarj^  of  State  by  leaving  two  copies,  counterparts  or 
fac-similes  thereof,  with  said  Secretary,  and  by  filing 
therewith  a  sworn  application  specifying  the  name  or 
names  of  the  person,  association  or  union  on  whose 
behalf  such  label,  trademark,  term,  wording,  design,  de- 
vice, color  or  form  of  advertisement  shall  be  filed,  the 
class  of  merchandise  and  a  description  of  the  goods  to 
which  it  has  been  or  is  intended  to  be  appropriated,  stat- 
ing that  the  party  so  filing  or  on  whose  behalf  such  label, 
trademark,  term,  wording,  design,  device,  color  or  form 


STATE   TR.\DEM.MIK   STATUTES.  543 

of  advertisement  shall  be  filed,  lias  the  right  to  the  use 
of  the  same,  that  no  other  person,  firm,  association, 
union  or  corporation  has  the  right  to  use  either  in  the 
identical  form  or  in  any  such  near  resemblance  thereto 
as  may  be  calculated  to  deceive,  and  that  the  fac-simile 
or  counterparts  filed  therewith  are  true  and  correct. 

Tliere  shall  be  paid  for  such  filing  and  recording  a 
fee  of  two  dolhu's.  Said  Secretary  shall  deliver  to  such 
person,  association  or  union  so  filing  or  causing  to  be 
filed  any  such  label,  trademark,  term,  wording,  design, 
device,  color  or  fonn  of  advertisement  so  many  duly 
attested  certificates  of  the  recording  of  the  same  as 
such  person,  association  or  union  may  apply  for,  for 
each  of  which  the  Secretary  shall  receive  a  fee  of  one 
dollar.  Any  such  certificate  of  record  shall,  in  all  suits 
and  prosecutions  under  this  act,  be  sufficient  proof  of 
the  adoption  of  such  label,  trademark,  term,  wording, 
design,  device,  color  or  form  of  advertisement.  Said 
Secretary  of  State  shall  not  record  for  any  person,  union 
or  association  any  label,  trademark,  term,  wording,  de- 
sign, device,  color  or  form  of  advertisement  that  would 
probably  be  mistaken  for  any  label,  trademark,  term, 
wording,  design,  device,  color  or  form  of  advertisement 
heretofore  filed  by  or  on  behalf  of  any  other  person, 
union  or  association. 

Sec.  4.  Any  person  who  shall,  for  himself  or  on  be- 
half of  any  other  person,  association  or  union  procure 
the  filing  of  any  label,  trademark,  term,  wording,  design, 
device,  color  or  form  of  advertisement  in  the  office  of 
the  Secretary  of  State,  under  the  provisions  of  this  act, 
by  making  any  false  or  fraudulent  representations  or 
declaration,  verbally  or  in  writing,  or  by  any  fraudulent 
means,  shall  be  liable  to  pay  any  damages  sustained  in 
consequence  of  such  filing,  to  be  recovered  by  or  on 
behalf  of  the  party  injured  thereby,  in  any  court  hav- 
ing jurisdiction,  and  shall  be  punished  by  a  fine  not 
exceeding  five  hundred  dollars,  or  by  imprisonment  not 
exceeding  three  months. 


544  APPENDIX  H. 

Sec.  5.  Every  sucli  person,  association  or  union  adopt- 
ing or  using  a  label,  trademark,  term,  wording,  design, 
de\'ice,  color  or  form  of  advertisement  as  aforesaid,  may 
proceed  by  suit  to  enjoin  the  manufacture,  use,  display, 
or  sale  of  any  counterfeits  or  imitations  thereof,  and 
all  courts  of  competent  jurisdiction  shall  grant  injunc- 
tions to  restrain  such  manufacture,  use,  display  or  sale, 
and  may  award  the  complainant  in  any  such  suit  dam- 
ages resulting  from  any  such  manufacture,  use,  sale  or 
display,  as  may  be  by  the  said  court  deemed  just  and  rea- 
sonable, and  shall  require  the  defendants  to  pay  such 
person,  association  or  union  all  profits  derived  from 
such  wrongful  manufacture,  use,  display  or  sale;  and 
such  court  shall  also  order  that  all  such  counterfeits  or 
imitations  in  the  possession  or  under  the  control  of  any 
defendant  in  such  cause  be  delivered  to  an  officer  of  the 
court,  or  to  the  complainants,  to  be  destroyed. 

Sec.  6.  Every  person  who  shall  use  or  display  the 
genuine  label,  trademark,  term,  wording,  design,  device, 
color  or  form  of  advertisement  of  any  such  person,  asso- 
ciation or  union  in  any  manner,  not  being  authorized  so 
to  do  by  such  person,  union  or  association,  shall  be 
deemed  guilty  of  a  misdemeanor,  and  shall  be  punished 
by  imprisonment  for  not  more  than  three  months  or  by 
a  fine  of  not  more  than  five  hundred  dollars. 

In  all  cases  where  such  association  or  union  is  not  in- 
corporated, suits  under  this  act  may  be  commenced  and 
prosecuted  by  an  officer  or  member  of  such  association 
or  union  on  behalf  of  and  for  the  use  of  such  association 
or  union. 

Sec.  7.  Any  person  or  persons  who  shall,  in  any  way, 
use  the  name  or  seal  of  any  such  person,  association  or 
union  or  officer  thereof,  in  and  about  the  sale  of  goods 
or  otherwise,  not  being  authorized  to  use  the  same,  shall 
be  guilty  of  a  misdemeanor,  and  shall  be  punishable  by 
imprisonment  for  not  more  than  three  months,  or  by  a 
fine  of  not  more  than  one  hundred  dollars. 


STATE   TR.VDEM^VKK   .STATUTE.,.  545 

Sec.  8.  Any  person  using  the  trademark  so  adopted 
and  filed  by  any  other  person,  or  any  imitation  of  such 
trademark,  or  any  counterfeit  thereof;  or  who  shall  in 
any  manner  mutilate,  deface,  destroy  or  remove  such 
trademark  from  any  goods,  wares,  merchandise,  article 
or  articles,  or  from  any  package  or  packages  containing 
the  same,  or  from  any  empty  or  second-hand  packages, 
which  has  contained  the  same  or  been  used  therefor, 
with  the  intention  of  using  such  empty  or  second-hand 
package,  or  of  the  same  being  used  to  contain  goods, 
wares,  merchandise,  article  or  articles  of  the  same  gen- 
eral character  as  those  for  which  they  were  first  used; 
and  any  person  who  shall  use  any  such  empty  or  second- 
hand package  for  the  purpose  aforesaid,  without  the  con- 
sent in  writing  of  the  person  whose  trademark  was  first 
applied  thereto  or  placed  thereon,  shall,  upon  conviction 
thereof,  be  fined  in  any  sum  not  less  than  five  hundred 
dollars,  or  by  imprisonment  for  not  more  than  three 
months,  and  the  goods,  wares,  merchandise,  article  or 
articles  contained  in  any  such  second-hand  package  or 
packages  shall  be  forfeited  to  the  original  user  of  such 
package  or  packages  whose  trademark  was  first  applied 
thereto  or  placed  thereon.  The  violation  of  any  of  the 
above  provisions  as  to  each  particular  articles  or  pack- 
ages shall  be  held  to  be  a  separate  offense. 

Sec.  9.  The  word  ''person"  in  this  act  shall  be  con- 
strued to  include  a  person,  copartnership,  corporation, 
association  or  union  of  workingmen. 

Sec.  10.  This  act  shall  take  effect  immediately  upon 
its  passage  and  approval  by  the  Governor. 

Approved  May  29,  1901. 


34 


54:6  APPENDIX  H. 

GEORGIA. 

Code  1895,  and  Supp.,  1901. 

§  1736.  Whenever  any  person,  association  or  union  of 
workinginen  have  adopted,  or  shall  hereafter  adopt  for 
their  protection,  any  label,  trademark,  or  form  of  ad- 
vertisement announcing  that  goods  to  which  such  label, 
trademark,  and  forms  or  advertisement  shall  be  attached 
were  manufactured  by  such  person  or  by  a  member  or 
members  of  such  association  or  union,  it  shall  be  un- 
lawful for  any  person  or  corporation  to  counterfeit  or 
imitate  such  label,  trademark,  or  form  of  advertisement 
with  intent  to  use  the  same  for  the  purpose  of  de- 
ceiving the  public  in  the  sale  of  the  goods. 

§  1737.  Every  person  who  shall  use  any  counterfeit 
or  imitation  of  any  label,  trademark,  or  form  of  adver- 
tisement of  any  such  person,  union,  or  association, 
knowing  the  same  to  be  counterfeit  or  imitation,  shall  be 
guilty   of  a  misdemeanor. 

§  1738.  Every  person,  association,  or  union  of  work- 
ingmen  that  has  adopted  or  shall  hereafter  adopt  a  label, 
trademark,  or  form  of  advertisement,  may  file  the  same 
for  record  in  the  office  of  the  secretary  of  state  by  leav- 
ing two  copies,  counterparts  or  fac  similes  thereof,  with 
the  secretary  of  state.  Said  secretary  shall  deliver  to 
such  person,  association,  or  union,  a  duly  attested  cer- 
tificate of  the  record  of  the  same,  for  which  he  shall  re- 
ceive the  fee  of  one  dollar;  such  certificate  of  record 
shall,  in  all  suits  under  this  chapter,  be  sufficient  proof 
of  the  adoption  of  such  label,  trademark,  or  form  of 
advertisement,  and  of  the  right  of  said  person,  associa- 
tion, or  union  to  adopt  the  same.  No  label  shall  be 
recorded  that  probably  would  be  mistaken  for  a  label 
already  of  record. 

§  1739.     Every  such    person,    association,    or    union 


STATE   TRxVDEM.VRK   STATUTES.  547 

ado/)ting  a  label,  trademark  or  fonn  of  advertisement 
as  aforesaid,  may  proceed  by  suit  to  enjoin  the  manu- 
facture, use,  display,  or  sale  of  any  such  counterfeits  or 
imitations,  and  all  courts  having  jurisdiction  thereof 
shall  o^rant  injunction  to  restrain  such  manufacture,  use, 
display  or  sale,  and  shall  award  the  complainant  in  such 
suits  such  damages  resulting  from  such  wrongful  manu- 
facture, use,  display,  or  sale  as  may  by  said  courts  be 
deemed  just  and  reasonable,  and  shall  require  the  de- 
fendant to  pay  such  person,  association,  or  union  the 
profit  derived  from  such  wrongful  manufacture,  use, 
dis])lay,  or  sale,  and  such  court  shall  also  order  that  all 
counterfeits  or  imitations  in  the  possession  or  under 
the  control  of  any  defendant  in  such  case  be  delivered 
to  an  officer  of  the  court,  or  to  the  complainant,  to  be 
destroyed. 

^  1740.  In  all  cases  where  such  associations  or  unions 
are  not  incorporated,  suits  may  be  commenced  and 
prosecuted  by  any  officer  or  member  of  such  association 
or  union  on  behalf  of  and  for  the  use  of  such  associa- 
tion or  union. 

§  1741.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  person,  association  or 
union,  or  officer  thereof,  in  and  about  the  sale  of  goods 
or  otherwise,  not  being  authorized  to  so  use  the  same, 
knowing  that  such  use  is  unauthorized,  with  the  intent 
to  deceive  the  public  in  the  sale  of  goods,  shall  be  guilty 
of  a  misdemeanor. 

§  4035.  Any  attempt  to  encroach  upon  the  business  of 
a  trader,  or  other  person,  by  the  use  of  similar  trade- 
marks, names  or  devices,  with  the  intention  of  deceiving 
and  misleading  the  jDublic,  is  a  fraud  for  which  equity 
grants    relief. 

§  GCuG.  A\nienover  any  person,  firm,  corporation  or 
association  shall  adopt  and  use  in  their  business,  for 
their  protection,  any  label,  trademark,  trade  name  or 
form  of  advertisement,  it  shall  be  unlawful  for  any  per- 


548  APPENDIX  H. 

son,  firm,  corporation  or  association  to  counterfeit  or 
imitate  sucli  label,  trademark,  trade  name  or  form  of 
advertisement,  with  intent  to  use  the  same  for  the  pur- 
pose of  deceiving  the  public  in  the  sale  of  goods.  Every 
person  violating  this  section  shall  be  guilty  of  a  misde- 
meanor and  punished  therefor. 

§  6677.  Every  person,  firm,  corporation  or  association 
who  shall  use  any  counterfeit  or  imitation  of  any  label, 
trademark,  trade  name  or  form  of  advertisement  of  any 
person,  firm,  corporation  or  association,  knowing  the 
same  to  be  counterfeit  or  imitation,  shall  be  guilty  of  a 
misdemeanor  and  punished  therefor. 

§  6678.  Every  person,  firm,  corporation  or  association 
who  shall  use  or  display  the  genuine  label,  trademark, 
trade  name  or  form  of  advertisement  of  any  person, 
firm,  corporation  or  association,  in  any  manner  not 
authorized  by  law,  such  person,  firm,  corporation  or 
association,  knowing  that  such  use  is  not  authorized, 
with  intent  to  deceive  the  public  in  the  sale  of  goods, 
shall  be  guilty  of  a  misdemeanor  and  be  punished 
therefor. 

§  6679.  Any  firm,  person,  corporation  or  association 
who  shall  use  the  name  or  seal  of  any  other  person, 
firm,  corporation  or  association,  in  and  about  the  sale 
of  goods  or  otherwise,  not  being  authorized  to  use  the 
same,  knowing  that  such  use  is  unauthorized,  with  in- 
tent to  deceive  the  public  in  the  sale  of  goods,  shall  be 
guilty  of  a  misdemeanor  and  punished  therefor. 

§  6680.  Any  person,  firm,  corporation  or  association 
that  shall  be  found  guilty  of  violating  the  provisions  of 
this  act,  or  any  of  them  as  aforesaid,  shall  be  punished 
as  prescribed  in  section  1039  of  the  Penal  Code. 

The  Act  of  December  20,  1893,  entitled  ''An  Act  for 
the  Protection  of  Union  Labels,  trademarks,  and  form 
of  advertisement,  and  providing  penalties  for  counter- 
feiting the  Same"  has  been  held  to  be  designed  ex- 
clusively for   the   protection   of  the  labels,   trademarks 


STATE  TRADEMARK  STATUTES.  549 

and  forms  of  advertisement  of  labor  unions  and  asso- 
ciations. 

Comer  v.  State,  103  Ga.  69,  29  S.  E.  Rep.  501. 


IDAHO. 

Political  Code,  1901. 

Sec,  635.  Wlienever  any  i)crson  or  any  association 
or  union  of  workingmen  has  heretofore  adopted  or  used, 
or  shall  hereafter  adopt  or  use  any  label,  trademark, 
term,  design,  device  or  form  of  advertisement,  for  the 
])urpose  of  designating,  making  known  or  distinguish- 
ing any  goods,  wares,  merchandise,  or  other  products  of 
labor,  as  having  been  made,  manufactured,  jjroduced, 
prepared,  packed  or  put  on  sale,  by  such  i:>erson,  or 
association,  or  union  of  workingmen,  or  by  a  member  or 
members  of  such  association,  or  union,  it  shall  be  unlaw- 
ful to  counterfeit  or  imitate  such  label,  trademark,  term, 
design,  device  or  form  of  advertisement,  or  to  use,  sell, 
offer  for  sale,  or  in  any  way  utter  or  circulate,  any 
counterfeit  or  imitation  of  any  such  label,  trademark, 
term,  design,  device  or  form  of  advertisement. 

Sec.  636.  Eveiy  such  person,  association  or  union, 
that  has  heretofore  adoi)ted  or  used,  or  shall  hereafter 
adopt  or  use,  a  label,  trademark,  term,  design,  device  or 
form  of  advertisement,  as  provided  in  section  635,  may 
file  the  same  for  record  in  the  office  of  the  secretaiy  of 
state,  by  leaving  two  copies,  counterparts  or  fac  similes 
thereof,  with  said  secretary,  and  by  filing  therewith  a 
sworn  application  specifying  the  name  or  names  of  the 
person,  association  or  union  on  whose  behalf  such  label, 
trademark,  term,  design,  device  or  fonn  of  advertise- 
ment shall  be  filed;  the  class  of  merchandise  and  a  de- 
scription of  the  goods  to  which  it  has  been  or  is  in- 
tended to  be  appropriated,  stating  that  the  party  so 
filing,  or  on  whose  behalf  such  label,  trademark,  tenu, 


550  APPENDIX  H. 

design,  device  or  form  of  advertisement  shall  be  filed, 
lias  the  right  to  the  use  of  the  same;  that  no  other  per- 
son, firm,  association,  union  or  corporation  has  the  right 
to  such  use,  either  in  the  identical  form  or  in  any  such 
near  resemblance  thereto  as  may  be  calculated  to  de- 
ceive, and  that  the  fac  simile  or  counterparts  filed 
therewith  are  true  and  correct.  There  shall  be  iraid  for 
such  filing  and  recording  a  fee  of  one  dollar.  Said  sec- 
retary shall  deliver  to  such  person,  association  or  union 
so  filing  or  causing  to  be  filed  any  such  label,  trademark, 
term,  design,  device  or  form  of  advertisement,  so  many 
duly  attested  certificates  of  the  recording  of  the  same 
as  such  person,  association  or  union  may  apply  for,  for 
each  of  which  certificates  said  secretary  shall  receive  a 
fee  of  one  dollar.  Any  such  certificate  of  record  shall, 
in  all  suits  and  prosecutions  under  this  act,  be  sufficient 
proof  of  the  adoption  of  such  label,  trademark,  term, 
design,  device  or  form  of  advertisement.  Said  secre- 
tary of  state  shall  not  record  for  any  person,  union  or 
association  any  label,  trademark,  term,  design,  device 
or  foim  of  advertisement  that  would  probably  be  mis- 
taken for  any  label,  trademark,  term,  design,  device  or 
form  of  advertisement  theretofore  filed  by  or  on  behalf 
of  any  other  person,  union  or  association;  and  any  per- 
son who  shall  for  himself  or  on  behalf  of  any  other  per- 
son, association  or  union  procure  the  filing  of  any  label, 
trademark,  term,  design  or  form  of  advertisement  in 
the  office  of  the  secretary  of  state  under  the  provisions 
of  this  subdivision,  by  making  any  false  or  fraudulent 
representations  or  declarations,  verbally  or  in  writing 
or  by  any  fraudulent  means,  shall  be  liable  to  pay  any 
damages  sustained  in  consequence  of  any  such  filing, 
to  be  recovered  by  or  on  behalf  of  the  party  injured 
thereby,  in  any  court  having  jurisdiction. 

Sec.  637.  Every  such  person,  association  or  union 
adopting  or  using  a  label,  trademark,  term,  design,  de- 
vice or  form  of  advertisement  as  aforesaid  may  proceed 


STATE  TRADEMABK  STATUTES.  551 

by  suit  to  enjoin  the  manufacture,  use,  display  or  sale 
of  any  counterfeits  or  imitations  thereof,  and  all  courts 
of  competent  jurisdiction  shall  grant  injunctions  to  re- 
strain such  manufacture  and  may  award  the  comj^lain- 
ant  in  any  such  damage  resulting  from  such  manufac- 
ture, use,  sale  or  display  as  may  be  by  the  said  court 
deemed  just  and  reasonable,  and  shall  require  the  de- 
fendants to  pay  to  such  persons,  association,  or  union 
all  i>rofits  derived  from  such  wrongful  manufacture, 
use,  displa}''  or  sale;  and  such  court  shall  also  order 
that  all  such  counterfeits  or  imitations  in  the  possession 
or  under  the  control  of  any  defendant  in  such  cause,  be 
delivered  to  an  officer  of  the  court,  or  to  the  complain- 
ant to  be  destroyed;  and  in  all  cases  where  such  asso- 
ciation or  union  is  not  incori:)orated,  suits  may  be  com- 
menced and  prosecuted  by  an  officer  or  members  of  such 
association  or  union,  on  behalf  of,  and  for  the  use  of 
such  association  or  union. 

Penal  Code  of  1901. 

Sec.  4950.  Whoever  counterfeits  or  imitates  any 
label,  trademark,  term,  design,  device  or  form  of  adver- 
tisement, described  in  section  635  of  the  Political  Code, 
or  sells,  offers  for  sale  or  in  any  way  utters  or  circu- 
lates any  counterfeit  or  imitation  of  any  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement;  or 
keeps  or  has  in  his  possession,  with  intent  that  the  same 
shall  be  sold  or  disposed  of,  any  goods,  wares,  merchan- 
dise or  other  product  of  labor  to  which  or  on  which  any 
such  counterfeit  or  imitation  is  printed,  painted, 
stamped  or  impressed,  or  knowingly  sells  or  disposes 
of  any  goods,  wares,  merchandise  or  other  product  of 
labor  contained  in  any  box,  case,  can  or  package,  to 
which  or  on  which,  any  such  counterfeit  or  imitation  is 
attached,  affixed,  printed,  painted,  stamped  or  im- 
pressed; or  keeps  or  has  in  his  possession,  with  intent 


552  APPENDIX  H. 

that  the  same  shall  be  sold  or  disposed  of,  any  goods, 
wares,  merchandise  or  other  product  of  labor  in  any 
box,  case,  can  or  package  to  which  or  on  which  any  such 
counterfeit  or  imitation  is  attached,  affixed,  printed, 
painted,  stamped  or  impressed,  shall  be  guilty  of  a  mis- 
demeanor and  be  punished  by  a  fine  of  not  more  than 
one  hundred  dollars,  or  by  imprisonment  for  not  more 
than  three  months. 

Sec.  4951.  The  phrases  ''forged  trademark"  and 
*' counterfeit  trademarks,"  or  their  equivalents,  as  used 
in  this  chapter,  includes  every  alteration  or  imitation 
of  any  trademark  so  resembling  the  original  as  to  be 
likely  to  deceive. 

Sec.  4952.  The  j^hrase  "trademark,"  as  used  in  sec- 
tion 4950,  includes  every  descriiotion  of  word,  letter,  de- 
vice, emblem,  stamp,  imprint,  brand,  printed  ticket, 
label,  or  wrapper  usually  affixed  by  any  mechanic,  manu- 
facturer, druggist,  merchant  or  tradesman,  to  denote  any 
goods  to  be  goods  imported,  manufactured,  produced, 
compounded,  or  sold  by  him  other  than  any  name,  word, 
or  expression  generally  denoting  any  goods  to  be  of 
some  particular  class  or  description. 

Section  4999.  Any  person  who  shall  for  himself  or 
on  behalf  of  any  other  person,  association,  or  union 
procure  the  filing  of  any  label,  trademark,  term,  design 
or  form  of  advertisement  in  the  office  of  the  secretary 
of  state,  by  making  any  false  or  fraudulent  representa- 
tions or  declarations,  verbally  or  in  writing,  or  by  any 
fraudulent  means,  shall  be  liable  to  pay  any  damages 
sustained  in  consequence  of  any  such  filing,  to  be  re- 
covered by,  or  on  behalf  of,  the  party  injured  thereby 
in  any  court  having  jurisdiction,  and  shall  be  guilty 
of  a  misdemeanor  and  be  punished  by  a  fine  not  ex- 
ceeding one  hundred  dollars,  or  by  imprisonment  not  ex- 
ceeding three  months. 

Section  5000.  Every  person  who  shall  use  or  display 
the   genuine   label,   trademark,   term,   design,   device   or 


STATE   TR.VDEMARK   STATUTES.  553 

form  of  advertisement  of  any  such  person,  association 
or  union,  in  any  manner  not  being  autliorized  so  to  do 
by  such  person,  union  or  association,  shall  be  deemed 
guilty  of  a  misdemeanor  and  shall  be  punished  by  im- 
prisonment for  not  more  than  three  months,  or  by  fine 
of  not  more  than  one  hundred  dollars. 

Section  5001.  Any  person  or  jjersons  who  shall  in 
any  way  use  the  name  or  seal  of  any  such  i)erson,  asso- 
ciation or  union  or  officer  thereof  in  and  about  the  sale 
of  goods  or  otherwise  not  being  authorized  to  so  use  the 
same,  shall  be  guilty  of  a  misdemeanor,  and  shall  be 
punishable  by  imi>risonment  for  not  more  than  three 
months,  or  by  a  fine  of  not  more  than  one  hundred 
dollars. 

ILLINOIS. 

Stakr  &  C.    St.   1896,   Vol.    3,    Pages   3955-3957. 

AN  ACT  to  protect  associations,  unions  of  workingmen  and  persons 
in  their  labels,  trademarks  and  forms  of  advertising. 

Par.  6,  §  1.  Whenever  any  person  or  any  association 
or  union  of  workingmen  has  heretofore  adopted  or  used 
or  shall  hereafter  adopt  or  use  any  label,  trademark, 
term,  design,  device  or  form  of  advertisement  for  the 
purpose  of  designating,  making  known  or  distinguish- 
ing any  goods,  wares,  merchandise  or  other  product  of 
labor  as  having  been  made,  manufactured,  produced, 
prepared,  packed  or  put  on  sale  by  such  person  or  asso- 
ciation or  union  of  workingmen,  or  by  a  member  or 
members  of  such  association  or  union,  it  shall  be  un- 
lawful to  counterfeit  or  imitate  such  label,  trademark, 
term,  design,  device,  or  form  of  advertisement,  or  to 
use,  sell,  offer  for  sale,  or  in  any  way  utter  or  circulate 
any  counterfeit  or  imitation  of  any  such  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement. 

Par.  7,  §  2.  Whoever  counterfeits  or  imitates  any 
such  label,  trademark,  term,  design,  device  or  form  of 


554  APPENDIX  H. 

advertisement,  or  sells,  offers  for  sale  or  in  any  way 
utters,  or  circulates  any  counterfeit  or  imitation  of  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement,  or  knowingly  uses  any  such  counterfeit 
or  imitation,  or  knowingly  sells  or  disposes  of  or  keeps 
or  has  in  his  possession,  with  intent  that  the  same  shall 
be  sold  or  disposed  of,  any  goods,  wares,  merchandise 
or  other  product  of  labor  to  which  any  such  counterfeit 
or  imitation  is  attached  or  affixed,  or  on  which  any  such 
counterfeit  or  imitation  is  printed,  painted,  stamped  or 
impressed,  or  knowingly  sells,  or  disposes  of  any  goods, 
wares,  merchandise  or  other  product  of  labor  contained 
in  any  box,  case,  can  or  package  to  which  or  on  which 
any  such  counterfeit  or  imitation  is  attached,  affixed, 
printed,  painted,  stamped  or  impressed,  or  keeps  or  has 
in  his  possession  with  intent  that  the  same  shall  be  sold 
or  disposed  of,  any  goods,  wares,  merchandise  or  other 
(product  of  labor  in  any  box,  case,  can  or  package  to, 
which  or  on  which  any  such  counterfeit  or  imitation  is 
attached,  affixed,  printed,  painted,  stamped  or  im- 
pressed, shall  be  punished  by  a  fine  of  not  less  than  one 
hundred  (100)  dollars,  nor  more  than  two  hundred 
(200)  dollars,  or  by  imiorisonment  for  not  less  than 
three  (3)  months  nor  more  than  one  (1)  year,  or  by 
both  such  fine  and  imprisonment. 

Par.  8,  §  3.  Every  such  person,  association  or  union 
that  has  heretofore  adopted  or  used,  or  shall  hereafter 
adopt  or  use,  a  label,  trademark,  term,  design,  device  or 
form  of  advertisement,  as  provided  in  section  one  (1) 
of  this  act,  shall  file  the  same  for  record  in  the  office  of 
the  secretary  of  state,  by  leaving  two  (2)  copies,  coun- 
terparts or  fac  similes  thereof  with  said  secretary,  and 
by  filing  therewith  a  sworn  statement  specifying  the 
name  or  names  of  the  person,  association  or  union  on 
whose  behalf  such  label,  trademark,  term,  design,  device 
or  form  of  advertisement  shall  be  filed,  the  class  of  mer- 
chandise and  a  particular  description  of  the  goods  to 


STATE   TRADEM.VRK   STATUTES.  555 

which  it  has  been  or  is  intended  to  be  appropriated;  that 
tlie  party  so  filing,  or  on  whose  behalf  such  label,  trade- 
mark, term,  design,  device  or  fonn  of  advertisement 
shall  be  filed,  has  the  right  to  the  use  of  the  same,  and 
that  no  other  person,  firm,  association,  union  or  corpo- 
ration has  the  right  to  such  use  either  in  the  identical 
foi-m  or  in  any  such  near  resemblance  thereto  as  may 
be  calculated  to  deceive,  and  that  the  fac  simile  copies 
or  counterparts  filed  therewith  are  true  and  correct. 
There  shall  be  paid  for  such  filing  and  recording  a  fee 
of  one  (1)  dollar.  Any  person  who  shall  for  himself, 
or  on  behalf  of  any  other  person,  association  or  union, 
procure  the  filing  of  any  label,  trademark,  term,  design, 
device  or  form  of  advertisement  in  the  office  of  the 
secretary  of  state,  under  the  provisions  of  this  act,  by 
making  any  false  or  fraudulent  representations  or  dec- 
larations, verbally  or  in  writing,  or  by  any  fraudulent 
means,  shall  be  liable  to  pay  any  damages  sustained  in 
consequence  of  any  such  filing,  to  be  recovered  by  or  on 
behalf  of  the  party  injured  thereby  in  any  court  having 
jurisdiction,  and  shall  be  punished  by  a  fine  not  ex- 
ceeding two  hundred  (200)  dollars  or  by  imprisonment 
not  exceeding  one  (1)  year  or  both  such  fine  and  im- 
prisonment. The  secretary  of  state  shall  deliver  to 
such  person,  association  or  union  so  filing  or  causing  to 
be  filed  any  such  label,  trademark,  term,  design,  device 
or  form  of  advertisement  so  many  duly  attested  certifi- 
cates of  the  recording  of  the  same  as  such  person,  asso- 
ciation or  union  may  apply  for,  for  each  of  which  cer- 
tificates said  secretary  shall  receive  a  fee  of  one  (1) 
dollar.  Any  such  certificate  of  record  shall  in  all  suits 
and  prosecutions  under  this  act  be  sufficient  proof  of 
the  adoption  of  such  label,  trademark,  term,  design,  de- 
vice or  fonn  of  advertisement.  Said  secretary  of  state 
shall  not  record  for  any  person,  union  or  association 
any  label,  trademark,  term,  design,  device  or  fonn  of 
advertisement   that   would    reasonablv   be  mistaken   for 


556  APPENDIX  H. 

any  label,  trademark,  term,  design,  device  or  form  of 
advertisement  theretofore  filed  by  or  on  behalf  of  any 
other  person,  union  or  association. 

Par.  9,  §  4.  Eveiy  such  person,  association  or  union 
adopting  a  label,  trademark,  or  form  of  advertisement, 
as  aforesaid,  may  proceed  by  suit  to  enjoin  the  manu- 
facture, use,  display  or  sale  of  any  such  counterfeits  or 
imitations;  and  all  courts  having  jurisdiction  thereof 
shall  grant  injunctions  to  restrain  such  manufacture, 
use,  display  or  sale,  and  shall  award  the  complainant  in 
such  suit,  such  damages,  resulting  from  such  wrongful 
manufacture,  use,  display  or  sale,  as  may  by  said  court 
be  deemed  just  and  reasonable,  and  shall  require  the  de- 
fendants to  pay  to  such  person,  association  or  union 
the'  profits  derived  from  such  wrongful  manufacture, 
use,  display  or  sale;  and  said  court  shall  also  order 
that  all  such  counterfeits  or  imitations  in  the  possession 
or  under  the  control  of  any  defendant  in  such  case  be 
delivered  to  an  officer  of  the  court,  or  to  the  complainant 
to  be  destroyed. 

Par.  10,  §  5.  Every  person  who  shall  use  or  display 
the  genuine  label,  trademark,  or  form  of  advertisement 
of  any  such  person,  association  or  union,  in  any  manner 
not  authorized  by  such  person,  union  or  association, 
shall  be  deemed  guilty  of  a  misdemeanor,  and  shall  be 
punished  by  imprisonment  in  the  county  jail  not  less 
than  three  months  nor  more  than  one  year,  or  by  a  fine 
of  not  less  than  one  hundred  dollars  nor  more  than  two 
hundred  dollars,  or  both.  In  all  cases  where  such  asso- 
ciation or  union  is  not  incorporated,  suits  under  this 
act  may  be  commenced  and  prosecuted  by  any  officer  or 
member  of  such  association  or  union  on  behalf  of  and 
for  the  use  of  such  association  or  union. 

Par.  11,  §  6.  Any  person  or  persons  who  shall  in  any 
way  use  the  name  or  seal  of  any  such  person,  associa- 
tion or  union,  or  officer  thereof,  in  and  about  the  sale  of 
goods    or    otherwise,   not   being   authorized   to   use   the 


STATE   TE.yDEM.VRK   STATUTES.  557 

same,  shall  be  guilty  of  a  misdemeanor,  punishable  by 
imprisonment  in  the  county  jail  of  not  less  than  three 
months  nor  more  than  one  year,  or  by  a  fine  of  not  less 
than  one  hundred  dollars  nor  more  than  two  hundred 
dollars,  or  both. 

Supplement  1902  (Vol.  4,  Stakr  &  C.  St.) 

Paragraph  1,  >;  7.  The  fines  provided  for  in  this  act 
may  be  enforced  before  a  justice  of  the  peace  in  all 
cases  where  the  party  complaining  shall  so  elect,  and  in 
case  of  conviction  before  such  justice  of  the  peace  the 
offender  shall  stand  conmiitted  to  the  county  jail  until 
the  fine  and  costs  are  fully  paid,  under  the  provisions 
of  section  8,  article  IX,  of  an  act  to  revise  the  law  in 
regard  to  criminal  jurisprudence,  in  force  July  1,  1874, 
or  othei*wise.  The  first  process  under  this  section  in 
all  prosecutions  for  the  recovery  only  of  the  fines,  shall 
be  a  summons:  provided,  however,  that  a  warrant  for 
the  arrest  of  the  offender,  as  in  other  cases  when  jus- 
tices of  the  peace  have  original  criminal  jurisdiction, 
may  issue  upon  the  affidavit  of  any  person  that  any  of 
the  provisions  of  this  act  have  been  violated,  and  that 
the  person  making  the  complaint  has  just  and  reason- 
able grounds  to  believe  the  party  charged  is  guilty 
thereof.  (Section  as  amended  by  act  approved  April  22, 
1902). 

An  Act  of  May  11,  1901,  Hurd's  Kevised  Stat.,  1901, 
p.  1793,  relating  to  the  unlawful  buying  and  selling  of 
receptacles,  and  for  the  reg-istration  of  marks  in  connec- 
tion with  such  articles.  This  Act  has  been  held  to  be 
unconstitutional,  as  being  beyond  the  ix)lice  power  of 
the  state  and  in  contravention  of  §  22,  article  4  of  the 
Illinois  Constitution  of  1870  in  Hoi^wich  vs.  Walker- 
Gordon  Laboratory  Co.,  205  111.  497,  68  N.  E.  Kep.  938. 
A  similar  statute  passed  in  1873  (Rev.  Stat.  1874,  p. 
1084,  Chap.  140)  was  held  unconstitutional  in  Lippman 
V.  People,  175  111.  101,  51  N.  E.  Rep.  872. 


558  APPENDIX  H. 

That  union  labels  are  properly  within  the  protection 
of  i^aragraph  6,  sections  1  to  6,  See  Cohn  v.  People, 
149  111.  486,  37  N.  E.  Kep.  60  and  see  Vogt  v.  People, 
57  111.  App.  684. 

§  2,  Chap.  32,  Rev.  Stat.  1893,  forbidding  the  incor- 
poration of  two  companies  under  the  same  name,  does 
not  prevent  the  incorporation  of  separate  concerns  un- 
der the  corporate  names,  ''Elgin  Creamery  Company" 
and  "Elgin  Butter  Company";  the  word  "Elgin"  being 
geographical,  and  there  being  no  proof  of  any  intent, 
act  or  artifice  to  mislead  the  public  as  to  the  identity  of 
the  corporation. 

Elgin  Butter  Co.  v.  Sands,  155  111.  127,  40  N.  E. 
Rep.  616. 

That  a  warrant  in  aid  of  a  suit  for  trademark  in- 
fringement was  improperly  issued  under  the  general 
search  warrant  act  see  White  v.  Wagar,  185  111.  195; 
White  V.  Wagar,  83  111.  App.  592. 


APPLICATION  FOR  REGISTRATION  OF  TRADEMARK. 


State  of  — 
County  of 


1} 


The  undersigned  being  duly  sworn  on  oath,  says  that 


makes  this  statement  in behalf,  in  pursuance  of  Chapter  140  of 

"Kurd's"  Revised  Statutes  of  the  State  of  Illinois. 

That  he  files  herewith  two  copies  which  are  counterparts  or  fac- 
similes of  a  certain  which  has  adopted  and  intends  to 

appropriate  for  the  purpose  of  designating,  making  known  or  distin- 
guishing the  following  described  goods,  wares,  merchandise  or  products 
of  labor,  to-wit:   


That  he  has  the  right  to  use  the  said  and  that  no  other 

person,  firm  or  association  has  a  right  to  use,  either  in  the  identical 
form  herein  set  forth  or  in  any  such  near  resemblance  thereto  as  may 
be  calculated  to  deceive.  And  that  the  fac-simile  copies  or  counterparts 
filed  herewith  are  true  and  correct. 


STATE   TRADEMARK   STATUTES.  559 

The  essential  part  of  said  . 


Subscribed  and  sworn  to  before  me  by  the  said  this 

day  of  ,  A.  D.  19—. 

[seal.] 


'Notary  Public. 

INDIANA. 

Burns'  Annotated  Indiana  Statutes,  Revision  of  1901. 

8681.  That  any  firm,  i)erson,  corporation  or  volun- 
tary association  that  are  citizens  of  the  state  of  Indiana, 
except  foreign  corporations,  and  who  are  entitled  to  the 
exclusive  use  of  any  lawful  trademark,  label,  brand, 
stamp  or  wrapi)er,  may  obtain  protection  for  such  law- 
ful trademark,  label,  brand,  stamp  or  wrapper  by  com- 
plying with  the  following  requirements:  First,  by  caus- 
ing to  be  filed  with  the  secretary  of  state  a  statement 
specifying  the  names  of  the  parties,  and  the  residences 
and  places  of  business,  who  desire  the  protection  of  the 
trademark,  label,  brand,  stamp  or  wrapper,  the  class  of 
merchandise  and  the  particular  description  of  goods 
comprised  in  such  class,  by  which  the  trademark,  label, 
brand,  stamp  or  wrapper  has  been,  or  is  intended  to  be 
])rotected.  A  description  of  trademark,  label,  brand, 
stamp  or  wrapper,  with  fac  simile  thereof,  showing  the 
mode  in  which  it  has  been  and  is  intended  to  be  applied 
and  used,  and  the  length  of  time,  if  any,  during  which 
the  trademark,  label,  brand,  stamp  or  wrapper  has  been 
in  use.  Second,  by  making  a  payment  of  a  fee  of  two 
dollars  to  the  secretary  of  state,  whose  duty  it  will  be 
to  file  and  record  said  statement  in  a  book  kept  for  the 
purpose  to  be  procured  by  him  as  other  books  in  his 
office  of  like  nature  are  procured. 

8682.  Any  certificate  or  statement  prescribed  in  the 


560  APPENDIX  H. 

preceding  section  must,  in  order  to  create  any  right 
whatever  in  favor  of  the  party  filing  it,  be  accompanied 
by  a  written  declaration  verified  by  the  person,  or  some 
member  of  the  firm  or  oflQcer  of  the  corporation  or  vol- 
untary association  by  whom  it  is  filed,  to  the  effect  that 
the  party  claiming  the  protection  for  the  trademark, 
label,  brand,  stamp  or  wrapper,  has  a  right  to  the  same 
and  that  no  other  j^erson,  firm,  corporation  or  voluntary 
association  has  the  right  to  such  use  either  in  the  iden- 
tical form  or  in  any  such  near  resemblance  as  might  be 
calculated  to  deceive;  and  that  the  description  and  fac 
simile  i^resented  for  record  are  true  copies  of  the  trade- 
mark, label,  brand,  stamp  or  wrapper  sought  to  be  pro- 
tected. 

8683.  The  time  of  the  receipt  of  any  trademarks, 
label,  brand,  stamp  or  wrapper  at  the  office  of  the  secre- 
tary of  state  for  registration  shall  be  noted  and  re- 
corded. Certified  copies  of  the  trademark,  label,  brand, 
stamp  or  wrapper,  and  the  date  of  the  receipt  thereof, 
and  of  the  statement  and  affidavit  filed  therewith  shall  be 
prima  facie  evidence  of  the  facts  and  statements  and 
affidavit  record  in  any  suit  in  which  such  trademark, 
label,  brand,  stamp  or  wrapper  shall  be  brought  into 
controversy. 

8684.  A  trademark,  label,  brand  stamp  or  wrapper 
shall  remain  in  force  so  long  as  it  is  used  continuously ; 
after  a  disuse  of  six  months  it  shall  be  deemed  out  of 
existence.  Such  trademark,  label,  brand,  stamp  or 
wrapper  may  be  sold  or  assigned,  or  pass  to  personal 
representatives  by  will,  or  become  assets  of  an  estate. 
In  any  case  where  ownership  changes  of  such  trade- 
mark, label,  brand,  stamp  or  wrapper,  before  it  can  be 
used  by  the  successor  in  title,  a  statement  of  such 
change  of  ownership  shall  be  filed  with  the  secretary  of 
state,  and  he  shall  record  the  same  in  the  book  kept 
for  the  purpose  of  recording  trademarks,  labels,  brands, 
stamps  and  wrappers,  and  such  secretary  shall  receive 


STATE   TRADEMARK   STATUTES.  561 

two  dollars  for  recording  such  statement;  and  it  shall 
be  unlawful  to  use  such  trademark,  label,  brand,  stamp 
or  wrapper  till  such  change  of  ownership  has  been  filed 
as  aforesaid. 

8685.  Such  trademark,  lal^el,  brand,  stamp  or  wrap- 
per shall  entitle  the  person,  firm,  corporation,  or  volun- 
tary association  registering  the  same  to  the  .exclusive 
use  thereof,  so  far  as  regards  the  description  of  goods 
to  which  it  is  appropriated  in  the  statement  filed  under 
oath  as  aforesaid,  and  no  other  person,  firm,  corjooration 
or  voluntary  association  can  lawfully  use  the  same 
trademark,  label,  brand,  stamp  or  wrapper,  or  substan- 
tially the  same,  or  so  nearly  resembling  it  as  to  be  cal- 
culated to  deceive  upon  substantially  the  same  descrip- 
tion of  goods. 

8686.  For  a  violation  of  any  rights  created  by  this 
act,  the  person,  firm,  corporation  or  voluntary  associa- 
tion aggrieved,  shall  have  all  common  law  remedies  and 
actions  for  damages,  and  shall  be  entitled  to  an  injunc- 
tion to  prevent  further  use  of  any  trademark,  label, 
brand,  stamp  or  wrapper  by  this  act  secured  to  the  in- 
jured person,  firm,  corporation,  or  voluntary  associa- 
tion; and,  if  an  injunction  is  made  final  and  i^erpetual, 
the  injured  firm,  corporation  or  voluntary  association 
shall  recover  reasonable  attorney's  fees. 

8687.  Any  owner  of  a  trademark,  label,  brand,  stamp 
or  wrapper,  who  has  complied  with  the  provisions  of 
this  act,  shall  have  the  right  to  grant  to  others  the  au- 
thority to  use  such  trademark,  label,  brand,  stamp  or 
wrapper;  but  such  authority  to  so  use  must  be  in  writ- 
ing, signed  by  the  owner  of  such  trademark,  label, 
brand,  stamp  or  wrapper,  with  two  witnesses  to  such 
signature,  and  no  one  but  the  owner  shall  have  the  right 
to  use  such  trademark,  label,  brand,  stamp  or  wrapper, 
unless  such  written  authority  has  been  given. 

8688.  If  it  becomes  necessaiy  for  any  voluntary  as- 
sociation to  assert  any  right   to  any  trademark,  label, 

35 


562  APPENDIX  H. 

brand,  stamiD  or  wrapper,  it  shall  be  sufficient  to  use 
the  name  of  jDresident  or  chief  officer  of  such  association 
either  in  action  at  law,  suit  in  equity,  or  indictment  for 
the  violation  of  the  provisions  of  this  act. 

8689.  This  act  shall  not  be  construed  to  lessen,  im- 
pair or  abridge  any  rights  or  remedies  that  have  here- 
tofore existed  in  favor  of  any  one  owning  or  rightfully 
claiming  a  trademark,  label,  brand,  stamp  or  wrapper. 

8690.  That  any  person  or  persons,  who  shall  know- 
ingly or  wilfully  cast  or  engrave,  or  manufacture,  or 
have  in  his,  her  or  their  possession,  or  buy,  sell  or  oifer 
for  sale,  or  deal  in  any  die  or  dies,  plate  or  plates, 
brand  or  brands,  engraving  or  engravings  on  wood, 
stone,  metal  or  other  substances,  molds  or  any  false 
representations,  likeness,  copy  or  colorable  imitation  of 
any  die,  plate,  brand  or  mold  of  any  private  trademark, 
label,  brand,  stamp,  wrapper,  engraving  on  paper  or 
other  substance,  registered  and  recorded  pursuant  to 
this  act,  shall,  upon  conviction  thereof,  be  punished  by 
imprisonment  in  the  penitentiary  for  not  less  than  one 
year,  or  more  than  two  years,  or  be  fined  in  a  sum  not 
less  than  one  thousand  dollars,  or  more  than  two  thou- 
sand  dollars. 

8691.  That  any  person  or  persons  (who  shall)  know- 
ingly and  wilfully  make,  forge  or  counterfeit,  or  have 
in  his,  her  or  their  possession,  or  buy,  sell,  offer  for 
sale  or  deal  in  any  representation,  likeness,  similitude, 
copy  or  colorable  imitation  of  any  private  label,  brand, 
stamp,  wrapper,  engraving,  mold  or  trade  mark,  regis- 
tered and  recorded  pursuant  to  this  act,  shall,  upon  con- 
viction thereof,  be  punished  by  imprisonment  in  the  pen- 
itentiary for  a  period  of  years  not  more  than  two  nor 
less  than  one,  or  be  fined  in  any  sum  not  less  than  one 
thousand  dollars  nor  more  than  two  thousand  dollars. 

8692.  It  shall  be  unlawful  for  any  person,  firm,  cor- 
poration or  voluntary  association  doing  business  in  this 
state  to  have  in  his  or  its  iDossession,  or  to  sell,  or  offer 


STATE   TR.VDEMARK   STATUTES.  563 

for  sale  or  trade,  any  goods,  wares,  merchandise  or 
otlier  article  upon  which  he  or  it  knows  is  placed  or 
affixed  a  false,  forged  or  spurious  trademark,  label, 
brand,  stamp,  or  wrapper  in  likeness  or  imitation  of 
some  trademark,  label,  brand,  stamp,  or  wrapper  regis- 
tered as  provided  for  in  this  act;  and  any  such  person, 
finn,  corporation  or  voluntary  association  so  having  in 
his  or  its  possession  or  selling,  or  offering  for  sale  or 
trade,  any  goods,  wares  or  merchandise  upon  which  he 
or  it  knows  is  placed  or  affixed  a  false,  forged  or  spur- 
ious trademark,  label,  brand,  stamp  or  wrapper  in  like- 
ness or  imitation  of  some  trademark,  label,  brand,  stamp 
or  wrapper  registered  as  aforesaid  shall,  upon  convic- 
tion thereof,  be  i:)unished  by  fine  in  a  sum  of  not  less 
than  fifty  dollars  ($50.00)  nor  more  than  two  hundred 
dollars  ($200.00),  or  imprisoned  in  the  county  jail  six 
months,   or  both. 

Sections  8678-8680c  relate  to  the  protection  of  manufacturers,  bot- 
tlers, and  sellers  of  mineral  water,  cider,  ale,  beer,  ginger  pop,  soda 
water,  distilled  water,  ginger  ale,  seltzer  water,  fermented  liquors,  and 
other  beverages  in  the  unauthorized  use  of  their  bottles  or  syphons. 

Sections  8693-8703,  inclusive,  relate  to  the  labels,  names  and  stamps 
of  labor  unions  and  associations. 

Under  §  S680b.  an  indictment  which  failed  to  charge 
the  defendant  filled  or  caused  to  be  filled  any  bottle  or 
siphon  with  any  liquid  mentioned  in  the  Act,  was  held 
to  be  fatally  defective. 

State  V.  iVright,  159  Ind.  394,  65  N.  E.  Rep.  190. 

Wlien,  under  the  Act  of  1891,  page  317,  the  ''Cigar- 
maker's  International  Union  of  America,"  a  national 
labor  union,  registered  their  label,  the  benefit  of  the  Act 
being  by  its  terms  limited  to,  ''any  firm,  person,  coqjo- 
ration,  or  voluntary  association  that  is  a  citizen  of  the 
State,"  it  was  held  that  the  label  could  not  be  protected 
by  a  criminal  prosecution,  notwithstanding  the  fact  that 
members  of  the  association  were  citizens  of  the  State. 

State  V.  Hagen,  6  Ind.  App.  167,  33  N.  E.  Rep.  223. 


564  APPENDIX  H. 

The  sufficiency  of  an  indictment  under  §  8680b.  is  dis- 
cussed in  State  vs.  Barnett,  159  Ind.  432,  65  N.  E.  Rep. 
515. 

FORM   FOR   APPLICATION    FOR   REGISTRATION. 


Certificate  accompanying  a 

(Insert  Label,  Trademark,  Stamp,  or  Form  of  Advertisement,  as  the 

case  may  be.) 

filed    in    accordance    with 

An  Act  to  protect  manufacturers  from  the  use  of  counterfeit  labels, 
stamps  and  trademarks. 

Name   or   names   of   the    person   or    association 

(Follow  regulations  at  a.) 

Residence,  location  or  place  of  business 

Class  of  merchandise  and  the  particular  description  of  goods  com- 
prised in  such  class  to  which  the 

(Insert  Label,  Trademark,  Stamp,  or  Form  of  Advertisement,  as  the 

case  may  be.) 

has  been  or  is  intended  to  be  appropriated 

(Follow  regulations  at  b.) 

Length  of  time,  if  any,  during  which  the 

(Insert  Label,  Trademark,  Stamp,  or  Form  of  Advertisement,  as  the 

case  may  be.) 

has  been  in  use.     Since 

(Give   Month,   Day   of   Month   and   Year  when   adopted,   or  give   date 
since  when  in  use.) 

REGULATIONS. 

o.  If  a  corporation,  state  under  the  laws  of  what  State  incor- 
porated. 

If  one  or  more  persons  are  doing  business  under  a  proprietary  or 

company  name,  state  the  name  of  such  person  or  persons  and  add  the 
words  "doing  business  under  the  name  and  style  of,"  then  give  the 
proprietary  or  company  name  under  which  the  business  is  conducted. 

b.  State,  first,  as  near  as  possible  in  one  or  two  words,  the  gen- 
eral class  of  merchandise  to  which  the  label,  trademark,  stamp  or 
form  of  advertisement  has  been  or  is  intended  to  be  appropriated; 

(Second,  as  near  as  possible  in  one  or  two  words,  the  particular  de- 
scription or  designation  in  such  general  class  of  merchandise.  Do  not 
describe  the  composition,  or  name  the  parts  which  comprise  the 
formula  of  which  the  merchandise  is  composed; 

Third,  by  using  the  following  words:  "The  essential  feature  of  the 
(label,  trademark,  stamp  or  form  of  advertisement)  is,"  giving  what 
is  considered  to  be  the  essential  feature  or  features  thereof.  If  an 
illustration  or  pictorial  representation  is  used  for  a  trademark,  it  is 
very  desirable  that  a  word  or  words  shall  also  form  a  part  of  the 
"essential  features"  of  such  trademark; 

Fourth,  by  using  the  following  words,  that:  "The  style  and  size 
of  type  and  the  color  of  ink  and  paper  may  be  varied  at  pleasure." 


STATE   TR.U)EMARK   STATUTES.  565 

•I,  ,   do   hereby   declare,   in   accordance   with   the   provisions 

has  a  right  to  the  use  of  the —  (Insert  Label.  Trademark. 


Stamp  or  P'orm  of  Advertisement,  as  the  case  may  be.)  referred  to  In 
the  foregoing  certificate,  and  that  no  other  person,  firm,  association, 
union  or  corporation  has  the  right  to  such  use,  either  in  the  identical 
form  or  in  any  such  near  resemblance  thereto  as  may  be  calculated  to 
deceive,  and 

I   further  declare  that  the  fac-simlles,  copies  or  counterparts  filed 
with  the  foregoing  certificate  are  true  and  correct. 

In  witness  whereof,  I   have  hereunto  signed  my  name  this  

day  of  ,  in  the  year  one  thousand  . 

[stamp.) 

Sign  here . 


County  of  •» 

State  of  ,    / 

.  19—. 

Then  personally  appeared  the  above-named  and  made  oath 

that  the  foregoing  declaration   by  him   subscribed   is   true. 

Before  me,  . 

*If  a  person,  insert  name;  if  an  officer  of  an  association,  union  or 
corporation,  insert  name,  title  of  oflice,  and  name  of  the  association, 
union  or  corporation. 

tAffix  ten-cent  revenue  stamp  here  and  cancel  by  writing  initials 
and  date  thereon. 


IOWA. 

code  1897,  ch.  13.  tit.  24. 

Sec.  5049.  Falsely  using  label  of  labor  union. 
Eveiy  person,  or  association  or  union  of  working  men 
or  others,  that  has  adopted  or  shall  adopt  for  their  pro- 
tection any  label,  trademark  or  form  of  advertisement 
may  file  the  same  for  record  in  the  office  of  the  secretan^ 
of  state  by  leaving  two  copies,  counterparts  or  fac-similes 
thereof  with  the  secretary  of  state.  Said  secretary  shall 
thereupon  deliver  to  such  person,  association  or  union 
so  filing  the  same  a  duly  attested  certificate  of  the  rec- 
ord of  the  same,  for  which  he  shall  receive  a  fee  of  one 
dollar.  Such  certificate  of  record  shall  in  all  actions 
and   prosecutions   under   the   following   six   sections   be 


566  APPENDIX  H. 

sufficient  proof  of  the  adoption  of  sucli  label,  trademark 
or  foiTu  of  advertisement,  and  the  right  of  said  person, 
association  or  union  to  adopt  the  same. 

Sec.  5050.  Injunction.  Eveiy  person,  association 
or  union  adopting  a  label,  trademark  or  form  of  adver- 
tisement, as  specified  in  the  preceding  section,  may  pro- 
ceed by  action  to  enjoin  the  manufacture,  use,  display  or 
sale  of  any  counterfeits  or  imitations  thereof;  and  all 
courts  having  jurisdiction  of  such  actions  shall  grant  in- 
junctions to  restrain  such  manufacture,  use,  display  or 
sale,  and  shall  award  the  complainant  therein  such  dam- 
ages resulting  from  such  wrongful  manufacture,  use, 
display  or  sale,  and  a  reasonable  attorney's  fee  to  be 
fixed  by  the  court,  and  shall  require  the  defendant  to 
l^ay  to  such  person,  association  or  union  the  profits  de- 
rived from  such  wrongful  manufacture,  use,  display  or 
sale,  and  a  reasonable  attorney's  fee  to  be  fixed  by  the 
court,  and  said  court  shall  also  order  that  all  such  coun- 
terfeits or  imitations  in  the  possession  or  under  the  con- 
trol of  any  defendant  in  such  case  be  delivered  to  an 
officer  of  the  court  to  be  destroyed.  Such  actions  may 
be  prosecuted  for  the  benefit  of  any  association  or  union 
by  any  officer  or  member  thereof. 

Sec.  5051.  Imitation  of  such  label.  It  shall  be  un- 
lawful for  any  person  or  corporation  to  imitate  any 
label,  trademark  or  form  of  advertisement  adopted  as 
provided  in  the  second  pi?eceding  section,  or  to  know- 
ingly use  any  counterfeit  or  imitation  thereof,  or  to 
use  or  display  such  genuine  label,  trademark  or  form 
of  advertisement,  or  the  name  or  seal  of  such  person, 
union  or  association,  or  of  any  officer  thereof,  unless 
authorized  so  to  do,  or  in  any  manner  not  authorized 
by  him  or  it.  Any  person  violating  any  provision  of 
this  section  shall  be  imprisoned  in  the  county  jail  not 
more  than  thirty  days,  or  be  fined  not  less  than  twenty- 
five  nor  more  than  one  hundred  dollars. 


STATE   TRADEMARK   STATUTES.  567 

RULES  GOVERNING  REGISTRATION 

OF 

LABELS,  TRADEMARKS  OR  FORMS  OF  ADVERTISING 

A  label,  trademark,  or  fonn  of  advertising,  may  be 
registered  in  either  or  several  of  the  above  forms,  but 
if  in  more  than  one  form,  a  separate  registration  must 
be  had  for  each  of  the  forms  for  which  registration  is 
desired.  Duplicate  fac-similes  or  counterparts  for  each 
fonn  must  he  furnished  and  a  fee  of  $1.00  paid  for  each 
registration  certificate  issued. 

Applicant  must  designate  in  enclosed  blank  applica- 
tion the  fonn  in  which  registration  is  desired,  whether 
as  a  label,  trademark,  or  form  of  advertising. 

No  certificate  will  be  issued  covering  more  than  one 
of  above   forms. 

If  application  is  made  by  a  corporation,  union,  or 
association,  the  application  should  be  signed  by  the 
proper  officer  tliereof,  with  official  title,  giving  the  full 
name  of  the  firm,  corporation,  union  or  association. 

If  by  a  firm  the  finn  name  should  be  given,  signed  by 
a  member  of  the  firm,  or  all  the  members  of  such  finn. 

Remit  $1.00  in  payment  for  each  certificate. 

All  remittances  should  be  made  by  draft,  express  or 
money  orders. 

Please  do  not  send  personal  checks. 


APPLICATION  FOB  REGISTRATION. 
OF  A 


by  of  filed  in  the  office  of  the  Secretary  of  State,  of  the 

State  of  Iowa,  in  accordance  with  sections  5049,  5050,  5051,  Code  of 
1897. 

The  said  has  been  or  is  intended  to  be  appropriated  for  use 

in  connection  with  . 

The  style  and  size  of  type  and  the  color  of  ink  and  paper  may  be 
varied  at  pleasure. 

If  used  as  a  label,  or  trademark,  it  is  usually  applied  by  painting 


668  APPENDIX  H. 

or  stenciling,  by  labels,  or  by  forming  on  the  material  of  which  the 
product  is  made. 

If,  as  a  form  of  advertising,  it  is  used  in  advertisements,  in  news- 
papers, circulars,  on  letter-heads,  on  invoices,  and  other  printed  matter. 


The  said  has  been  in  use  since  and  consists  of  the 

arbitrarily  selected  word,  mark,  symbol  or  character  herewith  illus- 
trated. 

The  essential  features  of  the consists  of . 

Ix    Witness    V/hereof,    I    have    hereunto    signed    my    name    this 
day  of  A.  D.  190— 


Name 
By 


State  of  ,     ■) 

County  of  j 


Subscribed  and  sworn  to  before  me  this day  of ,  A.  D. 

190—. 


Notary  Public. 

KANSAS. 

General  Statutes  1901. 

§  7850.  If  any  person  or  persons  shall  wilfully  change, 
alter,  deface,  destroy,  counterfeit,  cut  out  or  dispose  of 
any  trademark,  brand,  impression  or  device  used  by  a 
person,  company  or  corporation  within  this  state,  to 
designate  a  particular  description  of  goods,  wares,  mer- 
chandise, cask,  barrel,  half-barrel,  keg,  bottle,  package, 
or  the  contents  thereof,  he  or  they  shall  forfeit  and  pay 
to  the  owner  or  owners  thereof,  for  each  offense,  not 
exceeding  the  sum  of  twenty-five  dollars,  to  be  recovered 
in  any  court  proper  to  try  the  same,  or  before  a  justice 
of  the  peace  having  jurisdiction  of  the  same. 

§  7851.  If  any  person  shall  change,  shift  and  place 
any  brand,  mark  or  device,  used  or  intended  to  be  used 
for  the  purpose  aforesaid,  to  or  upon  any  piece 
of  goods,  wares,  merchandise,  cask,  barrel,  half-bar- 
rel,   keg,    bottle    or    package,    or    shall   intermix,    take 


STATE  TR.UDEM.VRK   STATUTES.  569 

out,  change  or  shift  any  article,  liquid,  or  commo- 
dity whatever,  into  a  branded  cask,  barrel,  half-barrel, 
keg,  bottle  or  package,  and  thereby  avail  him  or  them- 
selves of  another  person  or  persons'  brand,  mark,  or  de- 
vice, he  or  they  shall  forfeit  for  every  such  offense  the 
sum  of  twenty-five  dollars,  to  be  recovered  as  aforesaid. 

Sections   7852-7857,   inclusive,   protects  labor   unions  in   the  use  of 
their  labels  and  trademarks. 


KENTUCKY. 

No  general  trademark  law.    General  Statutes,  1899. 

§  4779.  Every  union  or  association  of  workingmen  or 
women  adopting  a  label,  mark,  name,  brand  or  device  in- 
tending to  designate  the  products  of  the  labor  of  members 
of  such  union  or  association  of  workingmen  or  women 
shall,  in  order  to  obtain  the  benefits  of  this  act,  file  du- 
plicate copies  of  such  label,  mark,  name,  brand  or  de- 
vice in  the  office  of  the  Secretary  of  State,  who  shall, 
under  his  hand  and  seal,  deliver  to  the  party  filing  or 
registering  the  same,  a  certified  copy  and  a  certificate  of 
the  filing  thereof. 

It  has  been  held  by  the  Court  of  Appeals  of  Kentucky 
that  union  labels  will  be  protected  against  infringement 
in  the  absence  of  a  statute. 

Eetterman  v.  Powers,  102  Ky.  133,  43  S.  W.  Rep.  180. 

§§  1279  and  1279a  relate  to  the  protection  of  packages 
of  manufactures  and  bottlers  of  soda  water,  etc. 

The  following  foi*m  lias  been  prescribed  for  applica- 
tion for  registration  under  Section  4749: 

Be  it  Remembered,  That  the has  adopted  the  following  label. 

mark,   name,    brand    or    device,    which    is    intended    to    designate   the 

products  of  the  labor  of  members  of  said  towit: 

and  hereby  files  duplicate  copies  thereof  in  the  office  of  the  Secretary 
of  State,  pursuant  to  the  provisions  of  Section  4749,  Chapter  130,  Ken- 
tucky Statutes,  title  "Union  and  Labor  Associations." 


570  APPENDIX  II. 

Witness  the  signatures  of  the  President,  Secretary  and  Treasurer, 

and  the  corporate  seal  of  the  said  ,  this  day  of  

1902. 


LOUISIANA. 

Act  No.  49  of  1898.) 

AN  ACT  to  protect  labels,  trademarks,  terms,  designs,  devices  or  forms 
of  advertisement,  and  to  provide  a  penalty  for  violation  thereof. 

Section  1.  Be  it  enacted  by  the  General  Assembly  of 
the  State  of  Louisiana:  Whenever  any  person,  or  any 
association  or  union  of  workmen,  has  heretofore 
adopted  or  used  or  shall  hereafter  adopt  or  use  any 
label,  trademark,  term,  design,  device  or  form  of  ad- 
vertisement for  the  purpose  of  designating,  making 
known,  or  distinguishing  any  goods,  wares,  merchandise 
<?r  other  jiroduct  of  labor,  as  having  been  made,  manu- 
factured, produced,  prepared,  packed  or  put  on  sale 
by  such  person  or  association  or  union  of  working- 
men  or  by  a  member  or  members  of  such  association  or 
union,  it  shall  be  unlawful  to  counterfeit  or  imitate 
such  Jabel,  trademark,  term,  design,  device  or  form  of 
advertisement,  or  to  use,  sell,  offer  for  sale  or  in  any 
way  utter  or  circulate  any  counterfeit  or  imitation  of 
any  such  label,  trademark,  term,  design,  device  or  form 
of  advertisement. 

Sec.  2.  Be  it  further  enacted,  etc..  Whoever  coun- 
terfeits or  imitates  any  such  label,  trademark,  term,  de- 
sign, device  or  form  of  advertisement;  or  sells,  offers 
for  sale  or  in  any  way  utters  or  circulates  any  counter- 
feit or  imitation  of  any  such  label,  trademark,  term,  de- 
sign, device  or  form  of  advertisement;  or  keeps  or  has 
in  his  possession  with  intent  that  the  same  shall  be 
sold  or  disposed  of,  any  goods,  wares,  merchandise  or 
other  product  of  labor  to  which  or  on  which  any  such 
counterfeit  or  imitation  is  printed,  painted,  stamped  or 
impressed ;  or  knowingly  sells  or  disposes  of  any  goods, 
wares,  merchandise  or  other  products  of  labor  contained 


STATE  TRADEMARK  STATUTES.  571 

in  any  box,  case,  can  or  package,  to  which  or  on  which 
any  such  counterfeit  or  imitation  is  attached,  affixed, 
printed,  painted,  stamped  or  impressed;  or  keeps  or 
has  in  his  possession  with  intent  that  the  same  shall  be 
sold  or  disposed  of,  any  goods,  wares,  merchandise  or 
other  product  of  labor  in  any  box,  case,  can  or  package 
to  which  or  on  which  any  such  counterfeit  or  imitation 
is  attached,  affixed,  printed,  painted,  stamped  or  im- 
pressed, shall  be  punished  by  a  fine  of  not  more  than 
one  hundred  dollars  or  by  imprisonment  for  not  more 
than  three  months. 

Sec.  3.  Every  such  person,  association  or  union  that 
has  heretofore  adopted  or  used,  or  shall  hereafter  adopt 
or  use,  a  label,  trademark,  terra,  design,  device  or  form 
of  advertisement  as  provided  in  section  1  of  this  act, 
may  file  the  same  for  record  in  the  office  of  the  secretary 
of  state  by  leaving  two  copies,  counterparts  or  fac-sim- 
iles  thereof,  with  said  secretary  and  by  filing  therewith 
a  sworn  application  specifying  the  name  or  names  of 
the  person,  association  or  union  on  whose  behalf  such 
label,  trademark,  term,  design,  device,  or  form  of  ad- 
vertisement shall  be  filed;  the  class  of  merchandise  and 
a  description  of  the  goods  to  which  it  has  been  or  it  in- 
tended to  be  appropriated,  stating  that  the  party  so  fil- 
ing or  on  whose  behalf  such  label,  trademark,  term,  de- 
sign, device  or  form  of  advertisement  shall  be  fiJed,  has 
the  right  to  the  use  of  the  same;  that  no  other  person, 
finn,  association,  union  or  corporation  has  the  right 
to  such  use,  either  in  the  identical  form  or  in  any  such 
near  resemblance  thereto  as  may  be  calculated  to  de- 
ceive, and  that  the  fac-simile  or  counterparts  filed  there- 
with are  tnie  and  correct.  There  shall  be  paid  for  such 
filing  and  recording  a  fee  of  one  dollar.  Said  secretary 
shall  deliver  to  such  person,  association  or  union  so 
filing  or  causing  to  be  filed  any  such  label,  trademark, 
term,  design,  device  or  form  of  advertisement  so  many 
duly  attested  certificates  of  the  recording  of  the  same 


572  APPENDIX  H. 

as  such  person,  association  or  union  may  apply  for,  for 
each  of  which  certificates  said  secretary  shall  receive  a 
fee  of  one  dollar.  Any  such  certificate  of  record  shall 
in  all  suits  and  prosecutions  under  this  act  be  sufficient 
proof  of  the  adoption  of  such  label,  trademark,  term, 
design,  device  or  form  of  advertisement.  Said  secretary 
of  state  shall  not  record  for  any  person,  union  or  asso- 
ciation any  label,  trademark,  tenn,  design,  device  or 
form  of  advertisement  that  would  probably  be  mistaken 
for  any  label,  trademark,  term,  design,  device  or  form 
of  advertisement  heretofore  filed  by  or  on  behalf  of  any 
other  person,  union  or  association. 

Sec.  4.  Any  person  who  shall  for  himself  or  on  be- 
half of  any  other  person,  association  or  union  procure 
the  filing  of  any  label,  trademark,  term,  design,  device 
or  foim  of  advertisement  in  the  office  of  the  secretary  of 
state  under  the  provisions  of  this  act,  by  making  any 
false  or  fraudulent  representations  or  declarations,  ver- 
bally or  in  writing  or  by  any  fraudulent  means,  shall  be 
liable  to  pay  any  damage  sustained  in  consequence  of 
any  such  filing  to  be  recovered  by  or  on  behalf  of  the 
party  injured  thereby  in  any  court  having  jurisdiction 
and  shall  be  punished  by  a  fine  not  exceeding  one  hun- 
dred dollars  or  by  imprisonment  not  exceeding  three 
months. 

Sec.  5.  Every  such  person,  association  or  union  adopt- 
ing or  using  a  label,  trademark,  term,  design,  device  or 
form  of  advertisement  as  aforesaid  may  proceed  by 
suit  to  enjoin  the  manufacture,  use,  display  or  sale  of 
any  such  counterfeits  or  imitations  thereof,  and  all 
courts  .  of  competent  jurisdiction  shall  grant  injunc- 
tions to  restrain  such  manufacture,  use,  display  or  sale 
and  may  award  the  complainant  in  any  such  suit  dam- 
ages resulting  from  such  manufacture,  use,  sale  or 
display  as  may  be  by  said  court  deemed  just  and  reason- 
able, and  shall  require  the  defendants  to  pay  to  such  per- 
son, association  or  union  all  profits  derived  from  such 


STATE   TR^U)EMiVRK   STATUTES.  573 

wrongful  manufacture,  use, display  or  sale ;  and  such  court 
shall  also  order  that  all  such  counterfeits  or  imitations 
in  the  possession  or  under  the  control  of  any  defendant 
in  such  cause  be  delivered  to  an  officer  of  the  court,  or  to 
the  complainant,  to  be  destroyed. 

Sec.  G.  Every  person  who  shall  use  or  display  the 
genuine  label,  trademark,  term,  design,  device  or  form 
of  advertisement  of  any  such  person,  association  or  un- 
ion in  any  manner,  not  being  authorized  so  to  do  by  such 
person  or  association,  shall  be  deemed  guilty  of  a  mis- 
demeanor, and  shall  be  punished  by  imprisonment  for 
not  more  than  three  months  or  by  a  fine  of  not  more 
than  one  hundred  dollars.  In  all  cases  where  such  asso- 
ciation or  union  is  not  incorporated,  suits  under  this  act 
may  be  commenced  and  prosecuted  by  an  officer  or  member 
of  such  association  or  union  on  behalf  of  and  for  the  use 
of  such  association  or  union. 

Sec.  7.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  person,  association  or 
union,  or  officer  thereof,  in  and  about  the  sale  of  goods 
or  othei-wise,  not  being  authorized  to  use  the  same,  shall 
be  guilty  of  a  misdemeanor,  and  shall  be  punishable  by 
imprisonment  for  not  more  than  three  months,  or  by  a 
fine  of  not  more  than  one  hundred  dollars. 

Sec.  8.  This  act  shall  take  effect  and  be  in  force  from 
and  after  its  passage. 

Approved  July  8,  1898. 

FORM  FOR  APPLICATION   FOR  REGISTRATION. 

To  all  Whom  it  May  Concern: 

Be  it  Known,  That  ,  a  corporation  organized  under  the  laws 

of  the  State  of ,  domiciled  in  the  City  of ,  County  of , 

and  doing  business  in  said  city  and  county,  has  adopted  for  its  use  a 

trademark  for of  which  three  copies,  counterparts  or  fac-similes, 

are  herewith  filed  for  record  in  the  office  of  the  Secretary  of  State,  to- 
wit: 

This   application   is   filed  on   behalf  of  the  aforesaid.     The 

class  of  merchandise,  and  description   of  goods  to  which   said   trade- 


574  APPENDIX  H. 

mark   has   been   appropriated   and   is   intended   to   be   appropriated  is 

,  the  said  has  the  sole  right  to  the  use  of  the  same.     No 

other  person,  firm,  association,  union  or  corporation  has  the  right  to 
such  use,  either  in  the  identical  form  herein  above  described,  or  in  any 
such  resemblance  thereto  as  may  be  calculated  to  deceive,  and  the 
fac-similes  or  counterparts  herewith  filed  are  true  and  correct. 

Thus   done  and  signed  at  the   City  of  this  day  of 

,  190—. 


AFFIDAVIT. 


State  of  — 
County  of 


■-} 


being  duly  sworn,  deposes  and  says  that  he  is  the  President 

of  the  ,  the  applicant  named  in  the  foregoing  instrument,  and 

that  the  facts  alleged  in  said  instrument  are  true. 

Sworn  to  and  subscribed  before  me,  this day  of ,  19 — . 


Notary  Public. 

MAINE. 

EXTRACT  FROM  CHAPTER  39  REVISED  STATUTES. 

Section  37.  Any  person  entitled  to  the  exclusive  use 
of  any  trademark,  or  who  intends  to  adopt  and  use  any 
trademark  not  previously  adopted  or  used  by  another, 
may  file  for  record  in  the  office  of  the  secretary  of  state 
a  certificate  setting  forth  his  name,  residence  and  place 
of  business;  the  class  of  merchandise  and  the  particular 
description  of  goods  comprised  in  such  class  to  which 
such  trademark  has  been  or  is  to  be  appropriated;  a 
description  thereof,  and  of  the  mode  in  which  it  is  to 
be  applied  and  used;  the  date  when  it  was  first  used 
or  adpoted;  that  he  has  a  right  to  the  use  of  it;  and 
that  no  other  person,  firm  or  corporation  has  the  right 
to  such  use,  either  in  the  identical  form,  or  having  such 
near  resemblance  thereto  as  is  calculated  to  deceive.  A 
fac-simile  of  such  trademark  shall  be  incorporated  in 
or  annexed  to  said  certificate,  and  a  duplicate  shall  be 
filed  therewith,  to  be  pasted  or  bound  into  the  record 


STATE   TR.VDEM^VRK   STATUTES.  575 

book,  if  ijracticable.    Such  certificate  shall  be  signed  and 
swoni  to  by  such  person,  or  his  agent. 

Sec.  38.  A\lioever  wilfully  swears  or  affinns  falsely 
to  any  such  certificate,  is  guilty  of  pei-jury,  and  shall 
pay  treble  damages  to  every  party  injured  thereby.  If 
the  secretary  of  state  has  reason  to  apprehend,  on  the 
filing  of  such  certificate,  that  any  statement  therein  con- 
tained is  untrue,  he  may  decline  to  record  the  same,  un- 
less the  party  filing  it  obtains  a  writ  of  mandamus  to 
compel  him.  Such  writ  may  be  granted,  but  witliout 
costs  to  the  secretary,  by  any  proper  court,  on  proof 
that  all  the  statements  in  such  certificate  are  true,  but 
no  final  hearing  on  the  application  therefor,  shall  be  had 
until  such  notice  thereof  as  said  court  orders  has  been 
advertised  in  one  of  more  newspaj^ers  j)ublished  in  the 
county  where  the  party  filing  said  certificate  resides; 
and  any  persons  who  desire  may  appear  and  intervene 
as  parties  defendant,  and  oppose  the  granting  of  such 
writ,  and  shall  be  liable  to  judgment  for  any  costs  occa- 
sioned by  such  intervention. 

Sec.  39.  Eveiy  party  entitled  to  make  and  file  such 
certificate  and  affidavit,  upon  recording  the  same  in  said 
office,  becomes  entitled  to  the  exclusive  use  of  the  trade- 
mark therein  described,  so  long  as  he  or  his  assigns  con- 
tinue to  be  engaged  in  the  manufacture  or  sale  of  the 
merchandise  or  description  of  goods  to  which  it  is  ai> 
propriated;  and  such  right  is  assignable  in  writing;  but 
all  assignments  thereof  are  good  only  against  the  as- 
signor and  his  personal  representatives,  until  lodged  for 
record  in  said  office. 

Sec.  40.  The  secretaiy  of  state  shall  retain  all  such 
certificates  on  file,  and  cause  the  same  and  all  assign- 
ments of  trademark  lights  to  be  recorded  at  length  in 
his  office,  and  is  entitled  to  a  fee  of  three  dollars  for 
each  certificate,  and  one  dollar  for  each  assignment  so 
filed  and  recorded.  Copies  of  the  record  of  any  such 
certificate,  attested  by  him  under  the  seal  of  the  state, 


576  .VPPENDIX  H. 

are  prima  facie  evidence  of  the  right  of  the  party  filing 
such  certificate  to  the  exclusive  use  of  the  trademark 
tlierein  described  for  the  periods  limited  in  the  preced- 
ing section. 

Sec.  41.  AVlioever  reproduces,  copies,  counterfeits,  or 
imitates  any  such  recorded  trademark,  knowing  the  same 
to  have  been  recorded,  and  affixes  such  reproduction, 
cojDy  counterfeit  or  imitation  to  goods  resembling  or 
designed  to  resemble  those  to  which  such  trademark 
is  so  appropriated  shall  pay  to  the  owner  of  such  trade- 
mark double  damages  besides  such  sum  not  exceeding 
five  hundred  dollars  as  the  court  before  which  the  action 
is  brought  orders  to  be  added  to  the  damages  found  by 
the  verdict  or  judgment. 

Sec.  42.  AVlioever  fraudulently  and  with  intent  to  de- 
ceive affixes  any  trademark  recorded  under  this  chapter, 
or  any  such  imitation  thereof  as  is  calculated  to  de- 
ceive, to  any  goods,  receptacle  or  package  similar  in 
descriptive  properties  to  those  to  which  such  trademark 
is  appropriated,  or  who  fraudulently  and  with  intent  to 
deceive,  jolaces  in  any  receptacle  or  package  to  which  is 
lawfully  affixed  a  recorded  trademark,  goods  other  than 
those  which  said  trademark  is  designed  and  appro- 
priated to  protect;  or  who  fraudulently  and  with  intent 
to  deceive,  deals  in  or  keeps  for  sale  any  goods  with  a 
trademark  fraudulently  affixed  as  above  described,  or 
any  goods  contained  in  any  package  or  receptacle  hav- 
ing a  lawful  trademark,  but  not  being  such  goods  as 
said  trademark  was  designed  and  appropriated  to  pro- 
tect, shall  be  fined  not  more  than  five  hundred  dollars, 
or  imprisoned  not  more  than  thirty  days,  or  both. 

Sec.  43.  This  chapter  does  not  abridge  rights  to  any 
existing  trademarks,  whether  the  same  are  hereafter 
recorded  or  not,  nor  any  remedies  or  rights  of  action 
otherwise  or  heretofore  existing  in  favor  of  owners  of 
trademarks. 


STATE  TRADEMARK  STATUTES.  577 


Laws  1893,  Ch.  276. 

AN  ACT  to  protect  persons,  associations  and  unions  of  workingmen  and 
others  in  their  labels,  trademarks,  devices  and  forms  of  advertising. 

Section  1.  Whenever  any  person,  or  any  association, 
or  union  of  workingmen  has  adopted  and  used,  or  shall 
hereafter  adopt  and  use  any  label,  trademark,  device,  or 
form  of  advertisement  to  indicate  that  goods  to  which 
such  label,  trademark,  device  or  form  of  advertisement, 
shall  be  attached  or  affixed,  or  on  which  the  same  shall 
be  printed,  painted,  stam})ed  or  impressed,  were  manu- 
factured or  produced,  packed  or  put  on  sale  by  such  per- 
son or  by  such  association  or  union,  or  by  a  member  or 
members  thereof,  which  was  not,  before  such  adoption 
and  use,  lawfully  adopted,  owned  and  used  by  another 
as  a  label,  trademark,  device  or  form  of  advertisement, 
from  whom  no  right  or  authority  to  use  and  adopt  the 
same  had  been  acquired  by  such  person,  or  by  such  asso- 
ciation or  union,  or  by  such  member  or  members  thereof, 
nor  a  counterfeit,  imitation  or  semblance  thereof,  it  shall 
be  unlawful  to  counterfeit  or  imitate  such  label,  trade- 
mark, device  or  fonn  of  advertisement,  or  use  the  same 
without  the  consent  or  authority  of  the  person,  associa- 
tion or  union  so  having  adopted  and  used  it. 

Sec.  2.  Whoever  knowingly,  and  with  intent  to  mis- 
lead or  deceive,  counterfeits  or  imitates  any  such  label, 
trademark,  device  or  fonn  of  advertisement,  or  know- 
ingly uses  or  sells  any  such  counterfeit  or  imitation  of 
any  such  label,  trademark,  device  or  form  of  advertise- 
ment, or  knowingly  sells  or  disjxDses  of,  or  keeps,  or  has 
in  his  possession  with  intent  that  the  same  shall  be  sold, 
any  goods  to  which  any  such  counterfeit  or  imitation  of 
such  label,  trademark,  device  or  fonn  of  advertisement 
is  attached  or  affixed,  or  on  which  the  same  is  printed, 
painted,  stamped  or  impressed,  shall,  for  the  first 
offense  be  punished  by  fine  not  exceeding  one  hun- 
3C 


578  .APPENDIX  H. 

dred  dollars,  or  by  imprisonment  for  less  than  one  year, 
and  for  the  second  and  everj^  subsequent  offense,  he 
shall  be  punished  by  fine  not  less  than  one  hundred,  nor 
more  than  five  hundred  dollars,  or  by  imprisonment  not 
less  than  sixty  days,  nor  more  than  three  years. 

Sec.  3.  Everj^  such  person,  association  or  union  that 
has  heretofore  adopted  or  shall  hereafter  adopt,  a  label, 
trademark,  device  or  form  of  advertisement  as  aforesaid 
shall  file  the  same  for  record  in  the  office  of  the  secre- 
tary of  state,  by  leaving  two  copies,  counterparts  or  fac- 
similes thereof,  with  the  secretaiy  of  state,  together 
with  a  statement,  in  writing,  signed  and  sworn  to  by 
such  person  or  by  some  person  for  and  in  behalf  of  such 
association  or  union,  stating  when  and  by  whom  so  far 
as  he  Imows  and  believes,  said  label,  trademark,  device 
or  form  of  advertisement  was  adopted  or  used,  in  what 
manner  and  for  what  purpose  the  same  is  to  be  used 
and  by  what  right  he  claims  the  same,  and  such  other 
particulars  as  shall  serve  to  identify  the  same,  said 
secretar}^  shall  deliver  to  such  person,  association  or 
union  so  filing  the  same  a  duly  attested  certificate  of  the 
record  of  the  same,  for  which  he  shall  receive  a  fee  of 
two  dollars.  Such  certificate  of  record  shall  in  all  suits 
and  prosecutions  under  this  act  be  sufficient  proof  of 
the  adoption  of  such  label,  trademark,  device,  or  form  of 
advertisement.  No  label,  trademark,  device  or  form  of 
advertisement  shall  be  recorded  that  so  nearly  resem- 
bles one  already  recorded  as  to  be  liable  to  be  mistaken 
for  such  label,  trademark,  device  or  form  of  advertise- 
ment and  when  in  the  judgment  of  the  secretary  of  state, 
such  resemblance  exists  he  shall  refuse  to  record  such 
label,  trademark,  device  or  form  of  advertisement. 

Sec.  4.  Every  such  person,  association  or  union  that 
has  adopted  and  uses  a  label,  trademark,  device  or  fonn 
of  advertisement,  as  aforesaid,  and  which  has  been  re- 
corded in  the  office  of  the  secretary  of  state  as  herein- 
before   provided,    may   proceed   by   suit    to   enjoin   the 


STATE  TR-U)EMABK  STATUTES.  579 

manufacture,  use,  display  or  sale  of  any  such  counter- 
feits or  imitations,  or  of  any  goods  to  which  such  coun- 
terfeits or  imitations  shall  be  affixed  or  attached,  or  on 
which  the  same  sliall  be  printed,  i)ainted  or  impressed, 
and  all  courts  having  jurisdiction  thereof  shall  grant 
injunctions  to  restrain  such  manufacture,  use,  display 
or  sale,  and  shall  award  the  complainant  in  such  suit, 
such  damages  resulting  from  such  wrongful  manufac- 
ture, use,  display  or  sale  as  may  by  said  court  be 
deemed  reasonable,  and  shall  require  the  defendants  to 
pay  such  i^erson,  association  or  union  the  profits  de- 
rived from  such  wrongful  manufacture,  use,  display  or 
sale;  and  said  court  shall  also  order  that  all  such  coun- 
terfeits or  imitations  in  the  possession  or  under  the 
control  of  any  defendant  in  such  case,  be  delivered  to 
an  officer  of  the  court,  or  to  the  complainant,  to  be  de- 
stroyed. 

Sec.  5.  Every  person  who  shall  wilfully  use  or  dis- 
play the  genuine  label,  trademark,  device,  or  form  of 
advertisement  of  any  such  person,  association  or  union, 
in  any  manner  not  authorized  by  such  person,  union  or 
association,  shall  be  deemed  guilty  of  a  misdemeanor, 
and  shall  be  punished  by  imprisonment  in  the  county 
jail  not  more  than  six  months,  or  by  a  fine  not  exceeding 
one  hundred  dollars,  or  both;  and  upon  conviction  for 
a  second  offense,  shall  be  punished  by  imprisonment  not 
less  than  thirty  days  nor  more  than  one  year,  or  by  a 
fine  not  less  than  fifty  nor  more  than  three  hundred 
dollars,  or  both. 

Sec.  6.  Any  person  or  persons  who  shall  in  any  way 
wilfully  use  the  name  or  seal  of  any  such  person,  asso- 
ciation or  union,  or  officer  thereof,  in  and  about  the  sale 
of  goods  or  otherwise,  not  being  authorized  to  use  the 
same,  shall  be  guilty  of  a  misdemeanor,  and  shall  be 
punished  by  imprisonment  in  the  county  jail  not  more 
than  six  months,  or  by  a  fine  not  exceeding  one  hundred 
dollars,  or  both;  and  upon  conviction  for  a  second  of- 


580  APPENDIX  H. 

fense  shall  be  punished  by  imprisonment  not  less  than 
thirty  days  nor  more  than  one  year,  or  by  a  fine  not 
less  than  fifty  nor  more  than  three  hundred  dollars,  or 
both. 

Sec.  7.  In  all  cases  where  the  association  or  union 
mentioned  in  this  act  is  not  incoriDorated,  suits  and  pro- 
ceedings under  this  act  may  be  commenced  and  prose- 
cuted by  an  officer  or  member  of  such  association  or 
union,  for  and  in  behalf  of  and  for  the  benefit  of  such 
association  or  union. 

Approved  March  28,  1893. 

Maine  also  has  an  act  for  the  protection  of  the  bottles 
used  in  the  manufacture  and  sale  of  mineral  water,  soda 
water,  and  similar  packages ;  §§  35-36,  c.  39,  E,evised 
Statutes  of  1883,  as  amended  with  an  additional  section 
in  Chapter  125,  General  Laws  1891. 

FORM  OF  APPLICATION  FOR  REGISTRATION. 

Sworn  Statement  accompanying  a  ,  filed  in  accordance  with 

the  laws  of  the  State  of  : 

I,  ,  do  hereby  certify  that  the  ,  counterparts  or  fac- 
similes of  which  are  filed  herewith,  is  filed  on  behalf  of  ,  doing 

business  in  ,  in  the  State  of  .     That  the  particular  class 

of  merchandise  and  the  particular  description  of  the  goods  to  which  it 
has  been  or  is  intended  to  be  appropriated  is  . 

That  the  essential  feature  of  the  said  consists  of  . 

That  said has  been  in  use  by  the  above  named  ,  since 


That  the  said  has  the  right  to  the  use  of  the  same,  and  that 

no  other  person,  firm,  association  or  corporation  has  the  right  to  such 
use,  either  in  the  identical  form,  or  in  any  such  near  resemblance 
thereto  as  may  be  calculatd  to  deceive,  and  that  the  fac-simile  copies 
or  counterparts  filed  herewith  are  true  and  correct. 

(Signature) . 


State  of  — 
County  of 


^} 


On  this  day  of  A.  D.  190 — ,  personally  ap- 
peared the  above  named and  made  oath  that  the  foregoing  state- 
ment by  him  subscribed  is  true. 

Before  me. 


STATE   TR-\X)EMARK   STATUTES.  581 


MARYLAND. 

A.N  ACT  to  protect  associations  and  unions  of  workingmen  and  per- 
sons in  their  labels,  trademarks  and  forms  of  advertising  and  to 
punish  offenders  for  a  violation  of  the  same. 

Section  1.  Be  it  enacted  by  the  General  Assembly 
of  Maryland,  That  whenever  any  person,  association  or 
union  of  workinginen  have  adopted,  or  shall  hereafter 
adopt  for  their  protection  any  label,  trademark  or  form 
of  advertisement  announcing  and  denoting  that  goods  to 
which  such  label,  trademark  or  form  of  advertisement 
shall  or  may  be  attached,  were  manufactured  by  such 
person  or  by  a  member  or  members  of  such  association 
or  union,  it  shall  not  be  lawful  for  any  person  or  corpo- 
ration to  counterfeit  or  imitate  such  label,  trademark 
or  form  of  advertisement,  every  person  violating  this 
section  shall  be  deemed  guilty  of  a  misdemeanor  and 
shall  upon  conviction  by  any  court  having  criminal 
jurisdiction  be  punished  by  imprisonment  in  the  city  or 
county  jail  for  not  less  than  three  months  nor  more  than 
one  year  or  by  a  fine  of  not  less  than  one  hundred  dol- 
lars nor  more  than  five  hundred  dollars,  or  both,  in  the 
discretion  of  the  court. 

Sec.  2.  And  he  it  enacted,  That  every  person,  corpo- 
ration or  association  who  shall  use  any  counterfeit  or 
imitation  of  any  label,  trademark  or  form  of  advertise- 
ment of  any  such  i>erson,  union  or  association,  knowing 
the  same  to  be  counterfeit  or  imitation,  (he)  shall  be 
guilty  of  a  misdemeanor  and  shall  on  conviction  by  any 
court  having  criminal  jurisdiction  be  punished  by  im- 
prisonment in  the  city  or  county  jail  for  a  term  of  not 
less  than  one  month  nor  more  than  one  year,  or  by  a 
fine  of  not  less  than  one  hundred  dollars  nor  more  than 
two  hundred  dollars,  or  both,  in  the  discretion  of  the 
court,  and  the  burden  of  proving  that  the  defendant  did 
not  know  the  true  character  of  the  said  label,  trademark 


582  APPENDIX  H. 

or  form  of  advertisement,  and  that  he  used  the  same  in 
good  faith  shall  be  on  the  defendant. 

Sec.  3.  And  he  it  enacted,  That  every  such  person, 
association  or  union  that  has  heretofore  adopted,  or 
shall  here^ifter  adopt,  a  label,  trademark  or  foim  of  ad- 
vertisement as  aforesaid,  may  file  the  same  for  record, 
in  the  office  of  the  Secretary  of  State  by  leaving  two  cop- 
ies, counterparts  or  fac-similes  thereof,  with  the  Secre- 
tary of  State  and  said  Secretary  shall  deliver  to  such 
person,  association  or  union  so  filing  the  same  a  duly 
attested  certificate  of  the  record  of  the  same  for  which 
he  shall  receive  a  fee  of  one  dollar,  such  certificate  of 
record  shall  be  in  all  suits  and  prosecutions  under  this  act 
sufficient  proof  of  the  adoption  of  such  label,  trademark 
or  fonn  of  advertisement,  and  of  the  right  of  said  per- 
son, association  or  union  to  adopt  the  same,  no  label 
shall  be  recorded,  that  probably  would  be  mistaken  for 
a  label  already  of  record,  of  which  question  the  said 
Secretary  shall  be  the  judge. 

Sec.  4.  And  be  it  enacted,  That  every  such  person, 
association  or  union  adopting  a  label,  trademark  or 
form  of  advertisement  as  aforesaid,  may  proceed  by  suit 
to  enjoin  the  manufacture,  use,  display  or  sale  of  any  such 
counterfeit  or  imitation,  and  all  courts  having  jurisdiction 
thereof  shall  grant  injunctions  to  restrain  such  manufac- 
ture, use,  display  or  sale,  and  shall  award  the  complainant 
in  such  suit  such  damage  resulting  from  such  wrongful 
manufacture,  use,  display  or  sale,  as  may  by  said  court 
be  deemed  just  and  reasonable,  according  to  the  evi- 
dence in  the  case,  and  shall  require  the  defendants  to 
pay  such  persons,  associations  or  unions,  the  profits 
derived  from  such  wrongful  manufacture,  use,  display 
or  sale,  and  in  addition  to  court  costs,  such  reasonable 
attorney's  fees  as  the  court  may  allow,  and  said  court 
shall  also  order  that  all  such  counterfeits  or  imitations 
in  the  possession  or  under  the  control  of  any  defendant 


STATE  TRADEMARK   STATUTES.  583 

in  such  case  be  delivered  to  an  officer  of  the  court,  or 
to  the  comi)lainant  to  be  destroyed. 

Sec.  5.  And  be  it  enacted,  That  every  person  who 
shall  use  or  display  the  genuine  lal^el,  trademark  of 
form  of  advertisement,  of  any  such  person,  association 
or  union,  in  any  manner  not  authorized  by  such  person, 
union  or  association,  shall  be  deemed  guilty  of  a  misde- 
meanor and  shall,  on  conviction  be  punished  by  im- 
prisonment in  the  city  or  county  jail  not  less  than  one 
month  nor  more  than  one  year,  or  by  a  fine  of  not  less 
than  fifty  dollars  or  more  than  two  hundred  dollars,  or 
both,  in  the  discretion  of  the  court. 

Sec.  6.  And  he  it  enacted,  That  any  person  or  persons 
who  shall  in  any  way  use  the  name  or  seal  of  any  such 
person,  association  or  union,  or  officer  thereof,  in  and 
about  the  sale  of  goods  or  othei'wise,  not  being  author- 
ized to  so  use  the  same,  shall  be  guilty  of  a  misde- 
meanor, punishable  on  conviction  by  imprisonment  in 
the  city  or  county  jail  for  a  term  of  not  less  than  three 
months  or  more  than  one  year,  or  by  a  fine  of  not  less 
than  fifty  dollars  nor  more  than  three  hundred  dollars, 
or  both,  in  the  discretion  of  the  court. 

Sec.  7.  And  he  it  enacted.  That  all  the  acts  and  parts 
of  acts  inconsistent  with  this  act  are  hereby  repealed. 

Sec.  8.  And  he  it  enacted,  That  this  act  shall  take 
eifect  from  the  date  of  its  passage. 

Approved  April  4th,  1892. 

Maryland  also  has  an  act  for  the  protection  of  the 
bottles,  jugs,  kegs,  etc.,  of  manufacturers  and  dealers 
in  mineral  water  and  other  beverages ;  §§  201-206,  Arti- 
cle 27,  General  Laws,  amended  by  Acts  of  1892,  Chapter 
262. 

As  to  the  requisites  of  a  bill  in  equity  founded  on 
registration  under  the  Act  of  1892,  see  Smitli-Dixon  Co. 
V.  Stevens,  59  Atl.  Rep.  401. 


584  APPENDIX  H. 

FORM  AND  REQUIREMENTS   FOR   REGISTRATION. 

State  of  ,■)  ,.„_ 

City  of  ,  / ^^"     • 

I   hereby   certify  that  ,   whose   business  or   trade   is  , 

have  adopted  a  trademark  or  label,  and  hereby  make  application  to 
the  Secretary  of  State  of  the  State  of  Maryland,  for  the  registration  of 
the  same,  in  compliance  with  the  provisions  of  Chapter  357  of  the 
laws  of  Maryland  of  1892. 

Witness,  the  hand  of  the  President  (or  other  proper  oflScer)  and 
the  seal  of  the  corporation,  this  day  of ,  190 — . 


[corporate  seal.] 


President  (or  other  proper  officer.) 


State  of  -         ,   . 
County  of  '" 


■-} 


Personally  appeared  before  me,   the  undersigned,  a  Notary  Public 

of  the  State  of  ,  residing  at  ,  in  said  State  and  County 

. ,  who  has  signed  the  foregoing  certificate,  and  made  oath  in  due 

form  of  law  that  the  matters  and  things  therein  set  forth  are  true, 
and  that  he  is  the  proper  oflScer  to  sign  the  same. 

Sworn  to  and  subscribed  before  me,  this day  of ,  190 — . 


Notary  Public. 
[notarial  seal.] 


Note. — This  form  is  preparea  for  the  registration  of  a  trademark 
when  the  applicant  is  a  company  or  corporation.  The  same  blank  may 
be  used  by  a  person,  firm,  or  association  by  striking  out  that  portion  of 
the  form  which  relates  only  to  incorporated  companies  or  corporations. 
The  law  requires  that  two  copies  or  fac-similes  of  the  trademark  or 
label  to  be  filed  with  the  application. 


STATE  TRADEMARK  STATUTES.  585 

MASSACHUSETTS. 

CHAPTER   72,  REVISED   LAWS. 

Definitions. 

Section  1.  The  following  words  shall,  in  addition  to 
their  ordinary  meaning,  have  the  meaning  herein  given: 

The  word  "name"  or  "names"  in  sections  two,  three, 
six,  ten,  twelve,  fourteen,  fifteen,  sixteen,  eighteen,  nine- 
teen and  twenty-one  of  this  chapter  includes  "letters," 
"marks,"  "devices"  and  "figures." 

The  word  "person"  or  "persons"  in  sections  two, 
seven,  nine,  fourteen  to  twenty,  inclusive,  and  twenty- 
three,  includes  "firm,"  "association,"  "union,"  and 
"corj)oration." 

The  word  "boots"  in  section  four  includes  "half 
boots,"  "shoes,"  "pumps,"  "sandals,"  "slippers"  and 
"overshoes." 

The  word  "label"  or  "labels"  in  sections  six  to 
twelve,  inclusive,  includes  "trademark,"  "stamp"  or 
"fonn  of  advertisement." 

The  word  "beverage"  or  "beverages"  in  sections  fif- 
teen to  eighteen,  inclusive,  includes  also  "milk," 
"cream,"  "soda  water,"  "mineral"  or  "aerated 
waters,"  "ale,"  "beer,"  "ginger  ale"  or  "similar  bev- 
erages." 

The  word  "vessel"  or  "vessels"  in  sections  fifteen  to 
eighteen,  inclusive,  includes  "cans,"  "bottles,"  "si- 
phons," "fountains"  and  "boxes." 

The  word  "can"  or  "cans"  in  sections  nineteen  to 
twenty- three,  inclusive,  includes  "jugs,"  "bottles"  and 


"jars." 


Labels  and  Trademarks. 


Section  2.     When  a  person  uses  any  peculiar  name 
upon  or  connected  with  an  article  manufactured  or  sold 


586  APPENDIX  H. 

by  him  to  designate  it  as  an  article  of  a  peculiar  kind 
or  quality,  or  as  manufactured  by  him,  no  other  person 
shall  without  his  consent  use  the  same  or  any  similar 
name  for  the  pui^pose  of  falsely  representing  an  arti- 
cle to  have  been  manufactured  by  or  to  be  of  the  same 
kind  or  quality  as  those  manufactured  or  sold  by  the 
person  rightfully  using  such  name. 

Sec.  3.  Whoever  violates  the  provisions  of  the  preced- 
ing section,  and  whoever  knowingly  sells  or  exposes  for 
sale  an  article  having  a  name  upon  or  connected  with  it 
in  violation  of  the  provisions  of  the  preceding  section, 
shall  be  liable  in  an  action  of  tort  to  any  party  ag. 
grieved  thereby  for  all  damages  actually  incurred. 

Sec.  4.  Every  manufacturer  of  leather  or  boots  shall 
have  the  exclusive  right  of  stamping  the  articles  manu- 
factured by  him  with  his  name  and  the  name  of  the 
place  of  manufacture;  and  such  stamping  shall  be  con- 
sidered as  a  warranty  that  the  article  stamped  is  mer- 
chantable, made  of  good  materials  and  well  manufac- 
tured ;  and  such  article  shall  not  be  considered  merchant- 
able unless  so  stamped. 

Sec.  5.  A  person  who  carries  on  business  in  this 
commonwealth  shall  not  assume  or  continue  to  use  in 
his  business  the  name  of  a  person  formerly  connected 
with  him  in  partnership  or  tlie  name  of  any  other  per- 
son, either  alone  or  in  connection  with  his  own  or  with 
any  other  name  or  designation,  without  the  consent  in 
writing  of  such  person  or  of  his  legal  representatives. 

Sec.  6.  The  sujjreme  judicial  court  or  the  superior 
court  shall  have  jurisdiction  in  equity  to  restrain  the 
use  of  names  or  labels  in  violation  of  the  provisions  of 
this  chai)ter. 

Sec.  7.  Any  person  may  adopt  a  label,  not  previously 
owned  or  adopted  by  any  other  person,  and  file  such 
label  for  record,  by  depositing  two  copies  or  fac-similes 
thereof  in  the  office  of  the  secretary  of  the  common- 
wealth, one  of  which  copies  or  fac-similes  shall  be  at- 


STATE   TRADExMARK   STATUTES.  587 

tached  by  the  secretary  of  the  commonwealth  to  the  cer- 
tificate of  record  hereinafter  referred  to.  The  api)licant 
shall  fiJe  with  the  label  a  certificate  specifying  the  name 
of  the  i>erson  so  filing  such  label,  his  residence,  situation 
or  place  of  business,  the  kind  of  merchandise  to  which 
such  label  has  been  or  is  intended  to  be  appropriated, 
and  the  length  of  time,  if  any,  during  which  it  has  been 
in  use.  If  such  label  has  not  ])een  and  is  not  intended 
to  be  used  in  connection  with  merchandise,  the  particular 
purpose  or  use  for  which  it  has  been  or  is  intended 
shall  be  stated  in  the  certificate.  Such  certificate  shall  be 
accompanied  by  a  written  declaration,  verified  under 
oath  by  the  person,  or  by  a  member  of  the  finn  or  by  an 
officer  of  the  association,  union  or  corporation,  by  which 
it  is  filed,  that  the  party  so  filing  such  label  has  a  right 
to  use  the  same,  and  that  no  other  person  has  the  right 
to  such  use,  either  in  the  identical  form  or  in  any  such 
near  resemblance  thereto  as  may  be  calculated  to  de- 
ceive, and  that  the  copies  or  fac-similes  filed  therewith 
are  true.  The  secretary  of  the  commonwealth  shall 
issue  to  the  person  depositing  such  label  a  certificate 
of  record,  under  the  seal  of  the  commonwealth,  and  the 
secretar}'^  shall  cause  the  certificate  to  be  recorded  in  his 
office.  Such  certificate  of  record  or  a  certified  copy  of 
its  record  in  the  office  of  the  secretaiy  of  the  common- 
wealth, shall  in  all  suits  and  prosecutions  under  the  pro- 
visions of  this  section  and  of  sections  eight  to  fourteen, 
inclusive,  be  sufficient  proof  of  the  recording  of  such 
label  and  of  the  existence  of  the  person  named  in  the 
certificate.  Tlie  fee  for  filing  the  certificate  and  declara- 
tion and  issuing  the  certificate  of  record  shall  be  two 
dollars.  No  label  shall  be  recorded  which  could  reason- 
ably be  mistaken  for  a  label  already  on  record. 

Sec.  8.  The  secretary  of  the  commonwealth  is  author- 
ized to  make  regulations,  and  prescribe  forms  for  the 
filing  of  labels,  under  the  provisions  of  the  preceding 
section. 


588  APPENDIX  H. 

Sec.  9.  The  supreme  judicial  court  or  the  superior 
court  shall  have  jurisdiction  in  equity  to  restrain  the 
manufacture,  use  or  sale  of  counterfeits  or  imitations  of 
a  label,  recorded  as  provided  in  section  seven,  shall 
award  damages  resulting  from  such  wrongful  manufac- 
ture, use  or  sale  and  shall  require  the  defendant  to  pay 
the  owner  of  such  label  the  profits  derived  from  such 
wrongful  manufacture,  use  or  sale;  and  may  also  order 
that  all  such  counterfeits  or  imitations  in  his  posses- 
sion or  control  be  delivered  to  an  officer  of  the  court, 
or  to  the  complainant  to  be  destroyed.  If  the  complain- 
ant is  not  incori3orated,  suits  under  the  provisions  of 
sections  seven,  eight  and  ten  to  fourteen,  inclusive,  may 
be  commenced  and  prosecuted  by  an  officer  thereof,  on 
behalf  of  and  for  the  use  of  the  complainant.  Eveiy 
member  of  a  complainant  firm,  association  or  union  shall 
be  liable  for  costs  in  any  such  proceeding. 

Sec.  10.  Wlioever  knowingly  makes  or  uses  any  coun- 
terfeit or  imitation  of  any  lawful  name  or  label  or 
causes  the  same  to  be  made  or  used,  or  sells,  offers  for 
sale,  deals  in  or  has  in  his  joossession  with  intent  to 
use,  sell,  offer  for  sale  or  deal  in  the  same,  or  affixes, 
imi^resses  or  uses  such  counterfeit  or  imitation  upon 
any  goods,  shall  be  punished  by  a  fine  of  not  more  than 
two  hundred  dollars  or  by  imprisonment  for  not  more 
than  one  year,  or  by  both  such  fine  and  imprisonment. 

Sec.  11.  Whoever,  with  intent  to  defraud,  knowingly 
casts,  engraves  or  manufactures,  or  has  in  his  posses- 
sion, or  buys,  sells,  offers  for  sale,  or  deals  in,  a  die, 
plate,  brand,  mould,  or  engraving  on  wood,  stone,  metal 
or  other  substance,  of  a  label  recorded  pursuant  to  the 
statutes  of  this  commonwealth,  or  a  printing  press,  or 
types  or  other  tools,  machines  or  materials  provided  or 
prepared  for  making  a  counterfeit  or  imitation  of  such 
label,  shall  be  punished  by  a  fine  of  not  more  than  two 
hundred  dollars  or  by  imprisonment  for  not  more  than 
one  year,  or  by  both  such  fine  and  imprisonment. 


STATE   TRADEM.VRK   STATUTES.  589 

Sec.  12.  "W^ioever  knowingly  sells  or  exposes  for  sale 
goods  upon  which  any  lawful  name  or  label  or  any 
counterfeit  or  imitation  thereof  is  unlawfully  afl&xed,  im- 
pressed, or  used  shall  be  punished  by  a  fine  of  not  more 
than  two  hundred  dollars  or  by  imprisonment  for  not 
more  than  one  year,  or  by  both  such  fine  and  imprison- 
ment. 

Sec.  13.  Whoever,  with  intent  to  defraud,  knowingly 
aids  or  abets  in  the  violation  of  any  of  the  provisions  of 
the  seven  preceding  sections  shall  be  punished  by  a  fine 
of  not  more  than  one  hundred  dollars  or  by  imprison- 
ment for  not  more  than  six  months,  or  by  both  such  fine 
and   imprisonment. 

Sec.  14.  In  any  suit  or  prosecution  under  the  provi- 
sions of  the  five  preceding  sections,  the  defendant  may 
show  that  he  was  the  owner  of  such  name  or  label  prior 
to  its  being  filed  under  the  provisions  of  section  seven, 
and  that  it  has  been  wrongfully  filed  by  some  other  per- 
son. 

Note. — In  a  prosecution  under  this  act,  the  recital  in  the  certificate 
of  adoption  that  the  mark  had  been  in  use  "since  about  the  year  1888," 
was  held  suflScient  Commonwealth  v.  Rozen,  176  Mass.,  129,  57  N.  E. 
Rep.,  223. 

§§  15-23  relate  to  the  protection  of  vessels  used  in  the 
sale  of  beverages,  and  milk  cans.  Held  to  be  a  proper 
police  regulation  in  CommoniceaWi  v.  Anselvich,  186 
Mass.  376,  71  N.  E.  Rep.  790. 

AN  ACT  to  provide  for  registration  of  the  insignia  of  societies,  asso- 
ciations and  labor  unions,  and  to  prohibit  the  unauthorized  use 
thereof. 

Be  it  enacted,  etc.,  as  follows: 

Section  1.  The  insignia,  ribbons,  badges,  rosettes, 
buttons  and  emblems  of  any  society,  association  or  labor 
union  may  be  registered  in  the  office  of  the  secretary  of 
the  commonwealth  in  the  manner  and  subject  to  the  pro- 
visions, so  far  as  they  are  applicable,  set  forth  in  section 


590  APPENDIX  H. 

seven  of  chapter  seventy-two  of  the  Revised  Laws  in  re- 
gard to  labels;  and  the  secretary  is  hereby  authorized 
to  make  regulations  and  prescribe  forms  for  such  regis- 
tration. 

Sec.  2.  TV^oever,  not  being  a  member  of  a  society, 
association  or  labor  union,  for  the  purpose  of  repre^ 
senting  that  he  is  a  member  thereof,  wilfully  wears  or 
uses  the  insignia,  ribbon,  badge,  rosette,  button  or  em- 
blem thereof,  if  the  same  has  been  registered  in  the 
office  of  the  secretary  of  the  commonwealth,  shall  be 
punished  by  a  fine  of  not  more  than  twenty  dollars,  or 
by  imprisonment  for  not  more  than  thirty  days,  or  by 
both  such  fine  and  imprisonment. 

Sec.  3.  Chapter  four  hundred  and  thirty  of  the  acts 
of  the  year  nineteen  hundred  and  two  and  chapter  two 
hundred  and  seventy-five  of  the  acts  of  the  year  nineteen 
hundred  and  three  are  hereby  reappealed. 

Approved  May  13,  1904. 

§4  of  Chapter  462,  Statutes  1895,  is  a  penal  section 
for  using  counterfeit  trademarks  upon  cigars.  Under 
this  section  when  the  defendants  were  shown  to  have  a 
place  of  business  within  the  state,  a  conviction  was  sus- 
tained in  the  absence  of  any  proof  as  to  where  the  de- 
fendants intended  to  sell  the  cigars  bearing  the  counter- 
feit mark. 

Commonn-ealth  v.  Rozen,  176  Mass.  129,  57  N.  E. 
Eep.  223. 

Pub.  Stat.  Chap.  76,  §1  providing  that  trademarks 
cannot  be  used  without  the  consent  of  the  owner,  does 
not  apply  to  a  mark  that  is  the  name  of  a  machine  upon 
which  there  has  been  a  patent,  after  the  expiration  of 
the  patent. 

Dover  Stamping  Co.  v.  Fellows,  163  Mass.  191,  40  N. 
E.  Rep.  105. 

§  6,  Chapter  76,  Pub.  Stat.,  forbidding  any  person  to 
"assume  or  continue  to  use"  in  his  business  the  name 
of  a  person  formerly  connected  with  him  in  partnership, 


STATE  TRiVDEMABK  STATUTES.  591 

or  the  name  of  any  other  person  "without  written  con- 
sent," does  not  apply  to  a  person  advertising  himself  as 
"formerly  with"  or  "successor  to"  another. 

Martin  v.  Boitker,  163  Mass,  461,  40  X.  E.  Rep.  7GG. 

In  a  bill  in  equity  brought  by  a  labor  union,  under 
§  3,  Chap.  462,  Stat.  1895,  it  has  been  held  immaterial 
that  the  defendant's  use  of  the  spurious  label  antedated 
the  passage  of  the  act. 

Tracy  v.  Banker,  170  Mass.  266,  49  N.  E.  Rep.  308. 


INSTRUCTIONS    AND    FORM    FOR    THE    REGISTRATION    OF 
TRADEMARKS. 

COMMONWEALTH  OF  MASSACHUSETTS. 

OFFICE   OF   THE    SECRETARY. 

The  accompanying  blank  form  of  application  is  to  be  used  for  the 
registration  of  a  label,  trademark,  stamp  or  form  of  advertisement  in 
this  office  under  the  laws  of  this  Commonwealth. 

The  regulations  printed  in  small  type  upon  said  application  are  to 
be  carefully  followed  and  observed. 

Two  fac-similes  of  the  label,  trademark,  stamp  or  form  of  advertise- 
ment, either  in  the  press-printed  form  as  used  or  hand-printed  in  India 
ink  upon  bond  or  other  substantial  paper  (not  card  board),  and  the 
statute  fee  of  two  dollars  for  registration  are  to  accompany  the  appli- 
cation. 

Do  not  gum  or  fasten  the  fac-similes  in  any  way  to  the  application. 

Wm.  M.  Olix, 
Secretary  of  the  Commonwealth. 


COMMONWEALTH  OF  MASSACHUSETTS. 

(Regulations  printed  below  in  small  type  must  be  strictly  adhered  to.) 

Certificate  accompanying  a  

(Insert  the  Designation,  Insignia,  Ribbon,  Badge,  Rosette,  Button  or 

Emblem  as  the  case  may  be.) 
filed  for  record  in  accordance  with  section  7  of  chapter  72  of  the  Re- 
vised Laws,  relative  to  the  adoption  and  registration  of  Labels,  and 
chapter  335  of  the  Acts  of  1904,  an  Act  to  provide  for  registration  of 
the  Insignia  of  Societies,  Associations  and  Labor  Unions,  and  to  pro- 
hibit the  unauthorized  use  thereof. 

Name  of  the  Society,  Association  or  Labor  Union, , 

(If  the  Society,  Association  or  Labor  Union  is  a  Voluntary  Associa- 


592  APPENDIX  H. 

tion,  state  the  fact.     If  a  Corporation,  state  the  fact,  and  name 
the  State  under  the  laws  of  which  it  is  incorporated.) 

Location,  . 

(Give  city,  or  town  and  State.) 


The  particular  purpose  or  use  for  which  the 


(Insert  the  Designation,  Insignia,  Ribbon,  Badge,  Rosette,  Button  or 
Emblem  as  the  case  may  be.) 

has  been  or  is  intended  to  be  appropriated,  . 

(Give,  in  as  few  words  as  possible,  the  particular  purpose  or  use  for 
which  the  Insignia,  Ribbon,  Badge,  Rosette,  Button  or  Emblem 
has  been  or  is  intended  to  be  utilized.) 

The  essential  feature  of  the  

(Insert  the  Designation,   Insignia,  Ribbon,  Badge,  Rosette,  Button  or 
Emblem,  as  the  case  may  be.) 

consists  of  

(Give  only  what  is  considered  to  be  the  essential  feature  or  features 
of  the  Insignia,  Ribbon,  Badge,  Rosette,  Button  or  Emblem.) 


The  style  and  size  of  type  or  lettering,  and  color  of  ink  and  com- 
modity   

(Use  the  word  viay  or  the  words  will  not  as  the  case  may  be.) 
be  varied  at  pleasure. 

Length  of  time,  if  any,  during  which  the  

(Insert  the  Designation,  Insignia,  Ribbon,  Badge,  Rosette,  Button  or 
Emblem,  as  the  case  may  be.) 

has  been  in  use.    Since  

(Give  Month,  Day  of  Month  and  Year  when  adopted,  or  give  date  since 

when  in  use.) 

*I,  ,  do  hereby  declare  in  accordance  with  the  provision  of 

section  7  of  chapter  72  of  the  Revised  Laws,  that  ha —  a  right 

to  use  the  

(Insert  the  Designation,  Insignia,  Ribbon,  Badge,  Rosette,  Button  or 

Emblem,  as  the  case  may  be.) 
referred  to  in  the  foregoing  certificate,  and  that  no  other  person,  firm, 
association,  union  or  corporation  has  the  right  to  such  use  either  in 
the  identical  form  or  in  any  such  near  resemblance  thereto  as  may 
be  calculated  to  deceive  and 

I  FURTHER  DECLARE  that  the  copies  or  fac-similes  filed  with  the  fore- 
going certificate  are  true. 

In  witness  whereof  I  have  hereto  signed  my  name  this  day 

of in  the  year  nineteen  hundred  and  . 

[Sign  here.]  • 


STATE   TRADEMARK   STATUTES.  593 

COMMONWEALTH  OF  MASSACHUSETTS. 


190—. 


Then  personally  appeared   the  above-named  and  made  oath 

that  the  foregoing  declaration  by  him  subscribed  is  true. 
Before  me. 


Justice  of  the  Peace. 
*  This  declaration  Is  to  be  signed  and  sworn  to  by  an  officer  of  the 
Society,  Association  or  Labor  Union;  insert  name  of  officer,  title  of 
office,  and  name  of  the  Society,  Association  or  Labor  Union.  Outside  of 
Massachusetts,  oath  is  to  be  administered  by  a  Commissioner  for  Mas- 
sachusetts or  Notary  Public. 

FORM  OP  FAC-SIMILES. 

This  application  for  registration  is  to  be  accompanied  by  two  fac- 
similes, copies  or  counterparts  of  the  Insignia,  Ribbon,  Badge,  Rosette, 
Button  or  Emblem,  in  the  printed  or  other  durable  form,  in  which  such 
are  used,  or  hand  printed  in  India  ink  upon  substantial  paper  (not 
cardboard ) . 

Do  not  gum  or  fasten  the  fac-similes  in  any  way  to  this  applica- 
tion. 


MICHIGAN. 

§§11681-86,   C.   L.   1897. 

AN  ACT  to  provide  for  the  protection  of  associations  and  unions  of 
workingmen  and  artisans,  or  other  persons  in  their  Labels,  Trade- 
marks, and  Forms  of  Advertisement,  and  to  punish  the  counter- 
feiting and  fraudulent  use  of  such  labels,  trademarks,  and  forms 
of  advertising. 

(11681)  Section  1.  That  whenever  any  person  or  any 
association  or  union  of  workingmen  has  heretofore 
adopted  or  used,  or  shall  hereafter  adopt  or  use,  any 
label,  trademark,  term,  design,  device  or  form  of  ad- 
vertisement for  the  purpose  of  designating,  making 
known  or  distinguishing  any  goods,  wares,  merchandise 
or  other  product  of  labor  as  having  been  made,  manu- 
factured, produced,  prepared,  packed  or  put  on  sale  by 
such  person  or  association  or  union  of  workingmen  or 

37 


594  APPENDIX  H. 

by  a  member  or  members  of  such  association  or  union, 
it  shall  be  unlawful  to  counterfeit  or  imitate  such  label, 
trademark,  tenn,  design,  device,  or  form  of  advertise- 
ment, or  to  use,  sell,  offer  for  sale,  or  in  any  way  utter 
or  circulate  any  counterfeit  or  imitation  of  any  such 
labels,  trademark,  term,  design,  device  or  form  of  ad- 
vertisement. 

(11682)  Sec.  2.  AVhoever  counterfeits  or  imitates  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement,  or  sells,  offers  for  sale,  or  in  any  way 
utters  or  circulates  any  counterfeit  or  imitation  of  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement;  or  knowingly  uses  any  such  counterfeit 
or  imitation,  or  knowingly  sells  or  disposes  of,  or  keeps 
or  has  in  his  possession,  with  intent  that  the  same  shall 
be  sold  or  disposed  of,  any  goods,  wares,  merchandise 
or  other  product  of  labor  to  which  any  such  counterfeit 
or  imitation  is  attached  or  affixed,  or  on  which  any  such 
counterfeit  or  imitation  is  printed,  painted,  stamped  or 
impressed;  or  knowingly  sells  or  disposes  of  any  goods, 
wares,  merchandise  or  other  product  of  labor  contained 
in  any  box,  case,  can  or  package,  to  which  or  on  which 
any  such  counterfeit  or  imitation  is  attached,  affixed, 
printed,  painted,  stamped  or  impressed ;  or  keeps  or  has 
in  his  possession,  with  intent  that  the  same  shall  be  sold 
or  disposed  of,  any  goods,  wares,  merchandise  or  other 
product  of  labor  in  any  box,  case,  can  or  package  to 
which  or  on  which  any  such  counterfeit  or  imitation  is 
attached,  affixed,  printed,  painted,  stamped  or  im- 
pressed ;  or  shall  use  or  display  the  genuine  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement  of 
any  such  person,  association  or  union  in  any  manner, 
not  being  authorized  so  to  do  by  such  person,  union  or 
association;  or  who  shall  in  any  way  use  the  name  or 
seal  of  any  such  person,  association  or  union  or  officer 
tliereof,  in  and  about  the  sale  of  goods  or  otherwise,  not 
being  authorized  to  so  use  the  same,  shall  be  deemed 


STATE   TR.VDEMARK   STATUTES.  595 

guilty  of  a  misdemeanor,  and  sliall  be  punished  as  here- 
iual'ter  provided.  In  suits  or  proceedings  for  damage, 
or  for  equitable  relief  by  or  on  behalf  of  any  such  per- 
son, association  or  union,  on  account  of  the  violation  of 
any  provision  of  this  act,  it  shall  not  be  necessary  to 
prove  that  such  violation  was  knowingly  or  wilfully 
committed. 

(11G83)  Sec.  3.  Any  person,  whether  a  member  of  a 
firm  or  corporation,  or  otherwise,  who  shall  violate  any 
of  the  provisions  of  section  one  of  this  act,  or  who  shall 
knowingly  or  wilfully  violate  any  provision  of  section 
two  of  this  act,  shall  be  deemed  to  have  committed  a 
misdemeanor  thereby,  and  on  conviction  thereof  shall  be 
punished  by  a  fine  of  not  less  than  ten  nor  more  than  one 
hundred  dollars,  or  by  imprisonment  in  the  county  jail 
for  a  period  not  exceeding  ninety  days,  or  by  both  such 
fine  and  imj^risonment,  in  the  discretion  of  the  court. 

(11684)  Sec.  4.  In  action  at  law  or  proceedings  in 
equity  brought  on  behalf  of  any  such  association  or 
union  which  is  not  incorporated,  the  same  may  be 
brought  in  the  name  of  any  member  of  such  association 
or  union,  who  has  been  duly  authorized  so  to  do  by  such 
association  or  union,  but  for  the  use  and  benefit  of  all 
of  the  members  of  such  association  or  union:  provided, 
that  before  commencing  such  action  or  proceeding  the 
member  so  authorized  shall  file  with  the  justice  or  clerk 
of  such  court  a  certificate  of  the  president  and  secretary 
of  such  association  or  union,  showing  that  such  author- 
ity has  been  granted.  Any  criminal  proceeding  brought 
for  a  violation  of  any  provision  of  this  act,  may  be 
prosecuted  by  the  authorized  attorney  of  such  associa- 
tion or  union,  in  the  court  where  originally  commenced, 
but  in  such  case  the  fees  and  compensation  of  such  at- 
torney shall  be  borne  and  paid  exclusively  by  such  asso- 
ciation or  union:  provided,  that  nothing  herein  shall  be 
deemed  to  prevent  the  prosecuting  attorney  from  con- 
ducting any  such  prosecution,  or  the  said  authorized  at- 


596  APPENDIX  H. 

torney  of  such  association  or  union  from  deputizing  a 
duly  qualified  attorney  at  law  to  appear  in  his  stead. 

(11685)  See.  5.  Every  such  person,  association  or 
union  that  has  heretofore  adopted  or  used,  or  shall  here- 
after adopt  or  use,  a  label,  trademark,  tenn,  design,  de- 
vice or  form  of  advertisement,  as  provided  in  section 
one  of  this  act,  shall  file  the  same  for  record  in  the 
office  of  the  secretary  of  state,  by  leaving  two  copies, 
counterparts  or  fac-similes  thereof,  with  said  secretaiy, 
and  by  filing  therewith  a  sworn  statement  specifying  the 
name  or  names  of  the  person,  association  or  union  on 
whose  behalf  such  label,  trademark,  term,  design,  device 
or  form  of  advertisement  shall  be  filed,  the  class  of  mer- 
chandise and  a  particular  description  of  the  goods  to 
which  it  has  been  or  is  intended  to  be  appropriated ;  that 
the  party  so  filing,  or  on  whose  behalf  such  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement 
shall  be  filed  has  the  right  to  the  use  of  the  same,  and 
that  no  other  person,  firm,  association,  union  or  corpo- 
ration has  the  right  to  such  use,  either  in  the  identical 
form  or  in  any  such  near  resemblance  thereto  as  may 
be  calculated  to  deceive,  and  that  the  fac-simile  copies 
or  counterparts  filed  therewith  are  true  and  correct. 
There  shall  be  paid  for  such  filing  and  recording  a  fee 
of  one  dollar.  Any  person  who  shall  for  himself,  or  on 
behalf  of  any  other  person,  association  or  union,  procure 
the  filing  of  any  label,  trademark,  term,  design,  device 
or  form  of  advertisement  in  the  office  of  the  secretary  of 
state,  under  the  provisions  of  this  act,  by  making  any 
false  or  fraudulent  representations  or  declaration,  ver- 
bally or  in  writing,  or  by  any  fraudulent  means,  shall 
be  liable  to  pay  any  damages  sustained  in  consequence 
of  any  such  filing,  to  be  recovered  by  or  on  behalf  of  the 
party  injured  thereby  in  any  court  having  jurisdiction, 
and  shall  be  punished  by  a  fine  not  exceeding  one  hun- 
dred dollars  or  by  imprisonment  not  exceeding  three 
months,  or  by  both  such  fine  and  imprisonment.     Said 


STATE  TRADEMARK  STATUTES.  597 

secretary  shall  deliver  to  such  i)erson,  association  or 
union  so  filing  or  causing  to  be  filed  any  such  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment so  many  duly  attested  certificates  of  the  recording 
of  the  same  as  such  person,  association  or  union  may 
apply  for,  for  each  of  which  certificates  said  secretary' 
shall  receive  a  fee  of  one  dollar.  xVny  such  certificate 
of  record  shall  in  all  suits  and  prosecutions  under  this 
act  be  prima  facie  })roof  of  the  adoption  of  such  label, 
trademark,  tenn,  design,  device  or  form  of  advertise- 
ment.  Said  secretary  of  state  shall  not  record  for  any 
person,  union  or  association,  any  label,  trademark,  term, 
design,  device  or  form  of  advertisement  that  would  rea- 
sonably be  mistaken  for  any  label,  trademark,  term, 
design,  device  or  fonn  of  advertisement  theretofore  filed 
by  or  on  behalf  of  any  other  person,  union  or  association. 
(11686)  Sec.  6.  In  no  case  shall  the  certificate  from 
the  secretary  of  state,  obtained  in  conformity  with  the 
fifth  section  of  this  act,  be  assignable  by  the  party  to 
whom  the  same  is  issued. 

§§  5576-5680  page  1781,  Vol.  2  C.  L.  1897  relate  to  the  protection  of 
packages  of  manufacturers,  bottlers,  and  vendors  of  soda  water  and 
other  beverages. 


FORM    OF    APPLICATION    FOR    REGISTRATION. 

Sworn  Statement  accompaAying  a 

(Insert  the  word  Label,  Trademark,  Term,  Design,  Device  or  Form  of 

Advertisement,   as  the  case  may  be.) 
filed  in  accordance  with  Act.  No.  206  of  the  Public  Acts  of  1895,  of 
Michigan. 

*  I,  ,  do  hereby  declare  that  the  

(Insert  the  word  Label,  Trademark,  Term,  Design,  Device  or  Form  of 

Advertisement,  as  the  case  may  be.) 
counterparts  or  fac-sirailes  of  which  are  filed  herewith  is  filed  on  be- 
half of  that  the  particular  class  of  merchandise  and  a  particu- 
lar description  of  the  goods  to  which  it  has  been  or  is  intended  to  be 

appropriated  is that  the  said  has  the  right  to  the  use  of 

the  same  and  no  other  person,  firm,  association,  union  or  corporation 
has  the  right  to  such  use,  either  in  the  identical  form,  or  in  any  such 


598  APPENDIX  H. 

near  resemblance  thereto  as  may  be  calculated  to  deceive,  and  that  the 
fac-simile  copies  or  counterparts  filed  herewith  are  true  and  correct. 


(Sign  here.) 


State  of "»     ^ 

County  of  j 

On  this  day  of  ,  A.  D.  ,  before  me  personally 

appeared  the  above  named  and  made  oath  that  the  foregoing 

statement  by  him  subscribed  is  true. 


*  If  a  person,  insert  name;  if  a  member  of  a  company  or  firm,  in- 
sert name  and  add  the  words  "a  member  of  the  firm  or  co-partnership 
doing  business  under  the  name  and  style  of,"  then  give  the  company 
name,  and  add  "composed  of"  giving  names  of  the  members;  if  an 
officer  of  an  association,  corporation,  or  union,  insert  name,  title  of 
office  and  name  of  the  association,  corporation  or  union. 


MINNESOTA. 

CHAPTER   122,   GENERAL.  LAWS   1895. 

TRADEMARKS. 

AN  ACT  to  amend  an  Act  entitled  an  Act  Relating  to  Labels,  Trade- 
marks and  Advertisements,  and  to  Provide  for  Their  Protection 
and  the  Punishment  for  Counterfeiting  the  Same  or  for  Using 
Counterfeits  of  the  Same.  Approved  April  Seventeenth  (17th.) 
being  Chapter  Twenty-four  (24)  of  General  Laws  of  Minnesota  of 
1893). 

Be  it  enacted  hy  the  Legislature  of  the  State  of  Minne- 
sota: 

Section  1.  That  section  1  of  an  act  relating  to  labels, 
trademarks  and  advertisements,  and  to  provide  for  their 
protection  and  the  punishment  for  counterfeiting  the 
same,  or  for  using  counterfeits  of  the  same  (being  chap- 
ter twenty-four  (24)  of  the  General  Laws  of  Minnesota 
of  one  thousand  eight  hundred  ninety-three  (1893),  be, 


STATE  TR.VDEM.VKK   STATUTES.  599 

and  the   same   is   hereby  amended  to   read  as  follows, 
namely : 

**Sec.  1.  Protectiox.  Whenever  any  person,  or  any 
association  or  union  of  workingmen  has  heretofore 
adopted  or  used  or  shall  hereafter  adopt  or  use  any 
label,  trademark,  tenn,  design,  device  or  form  of  ad- 
vertisement for  the  purpose  of  designating,  making 
known,  or  distinguishing  any  goods,  wares,  merchandise 
or  other  product  of  labor,  as  having  been  made,  manu- 
factured, })roduced,  prei)ared,  packed  or  put  on  sale  by 
such  person  or  association  or  union  of  workingiuen  or 
by  a  member  or  members  of  such  association  or  union, 
it  shall  be  unlawful  to  counterfeit  or  imitate  such  label, 
trademark,  term,  design,  device  or  form  of  adver- 
tisement or  to  use,  sell,  offer  for  sale  or  in  any  way 
utter  or  circulate  any  counterfeit  or  imitation  of  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement. ' ' 

Sec.  2.  That  section  two  (2)  of  the  act  above  named 
be,  and  is  hereby  amended,  to  read  as  follows,  namely: 

''See.  2.  Penalty  for  counterfeiting  or  dealing 
IN  COUNTERFEITS.  Whoevcr  counterfeits  or  imitates  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement,  or  sells,  offers  for  sale,  or  in  any  way 
utters  or  circulates  any  counterfeit  or  imitation  of  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement,  or  keeps  or  has  in  his  possession  with 
intent  that  the  same  shall  be  sold  or  disposed  of,  any 
goods,  wares,  merchandise  or  other  products  of  labor  to 
which  any  such  counterfeit  or  imitation  is  printed, 
painted,  stamped  or  impressed;  or  knowingly  sells  or 
disposes  of  any  goods,  wares,  merchandise  or  other  pro- 
duct of  labor  contained  in  any  box,  case,  can  or  pack- 
age, to  which  or  on  which  any  such  counterfeit  or  imita- 
tion is  attached,  affixed,  printed,  painted,  stamped,  or 
impressed;  or  keeps  or  has  in  his  possession  with  intent 
that  the  same  shall  be  sold  or  disposed  of,  any  goods, 


600  APPENDIX  H. 

wares,  merchandise,  or  other  product  of  labor  in  any 
box,  case,  can  or  package,  to  which  or  on  which  any- 
such  counterfeit  or  imitation  is  attached,  affixed,  printed, 
painted,  stamped  or  impressed;  shall  be  punished  by  a 
fine  of  not  more  than  one  hundred  ($100)  dollars  or  by 
imprisonment  for  not  more  than  three  months." 

Sec.  3.  That  section  three  (3)  of  said  act  be  and  the 
same  is  hereby  amended  so  as  to  read  as  follows, 
namely : 

"Sec.  3.  Eegistey.  Every  such  person,  association 
or  union  that  has  heretofore  adopted  or  used,  or  shall 
hereafter  adopt  or  use  a  label,  trademark,  term,  design, 
device,  or  form  of  advertisement,  as  provided  in  section 
one  (1)  of  this  act,  may  file  the  same  for  record  in  the 
office  of  the  secretary  of  state  by  leaving  two  copies, 
counterparts  or  fac-similes  thereof  with  said  secretary, 
and  by  filing  therewith  a  sworn  application  specifying 
the  name  or  names  of  the  person,  association  or  union 
on  whose  behalf  such  label,  trademark,  term,  design,  de- 
vice or  form  of  advertisement  shall  be  filed;  the  class  of 
merchandise  and  a  description  of  the  goods  to  which 
it  has  been  or  is  intended  to  be  appropriated;  stating 
that  the  party  so  filing  or  on  whose  behalf  such  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment shall  be  filed  has  the  right  to  the  use  of  the  same ; 
that  no  other  person,  firm,  association,  union  or  corpora- 
tion has  the  right  to  such  use  either  in  the  identical  form 
or  in  any  such  near  resemblance  thereto  as  may  be  calcu- 
lated to  deceive,  and  that  the  fac-simile  or  counterparts 
filed  therewith  are  true  and  correct.  There  shall  be 
paid  for  such  filing  and  recording  a  fee  of  one  (1)  dol- 
lar. Any  person  who  shall  for  himself  or  on  behalf  of 
any  other  person,  association  or  union  procure  the  filing 
of  any  label,  trademark,  term,  design  or  form  of  ad- 
vertisement in  the  office  of  the  secretary  of  state  under 
the  provisions  of  this  act,  by  making  any  false  or  fraud- 
ulent representations  or  declaration,  verbally  or  in  writ- 


STATE  TRADEMARK  STATUTES.  601 

ing,  or  by  any  fraudulent  means,  shall  be  liable  to  pay 
any  damages  sustained  in  consequence  of  any  such  fil- 
ing, to  be  recovered  by  or  on  behalf  of  the  party  injured 
thereby  in  any  court  having  jurisdiction  and  shall  be 
jjunished  by  a  fine  not  exceeding  one  hundred  (100) 
dollars  or  by  imprisonment  not  exceeding  three  (3) 
months.  Said  secretary  shall  deliver  to  such  person, 
association  or  union  so  filing  or  causing  to  be  filed  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement  so  many  duly  attested  certificates  of  the 
recording  of  the  same  as  such  person,  association  or 
union  may  apply  for,  for  each  of  which  certificates  said 
secretary  shall  receive  a  fee  of  one  (1)  dollar.  Any 
such  certificate  of  record  shall  in  all  suits  and  prosecu- 
tions under  this  act  be  sufficient  proof  to  the  adoption 
of  such  label,  trademark,  tenn,  design,  device  or  fonn 
of  advertisement.  Said  secretary  of  state  shall  not  re- 
cord for  any  person,  union  or  association  any  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment that  would  reasonably  be  mistaken  for  any  label, 
trade  mark,  term,  design,  device  of  form  of  advertise- 
ment theretofore  filed  by  or  in  behalf  of  any  other  x^er- 
son,  union  or  association." 

Sec.  4.  That  section  four  (4)  of  said  act  be  and  is 
hereby  amended  to  read  as  follows: 

**Sec.  4.  Prohibiting  infringements.  Every  such 
person,  association  or  union  adopting  or  using  a  label, 
trademark,  term,  design,  device  or  fonn  of  advertise- 
ment as  aforesaid,  may  proceed  by  suit  to  enjoin  the 
manufacture,  use,  display  or  sale  of  any  counterfeits  or 
imitations  thereof  and  all  courts  of  competent  jurisdic- 
tion shall  grant  injunctions  to  restrain  such  manufac- 
ture, use,  disj^ay  or  sale  as  may  be  by  the  said  court 
deemed  just  and  reasonable,  and  shall  require  the  defen- 
dants to  pay  to  such  person,  association  or  union,  all 
profits  derived  from  such  wrongful  manufacture,  use, 
disj^lay  or  sale,  and  such  court  shall  also  order  that  all 


602  APPENDIX  H. 

such  counterfeits  or  imitations  in  the  possession  or 
under  the  control  of  any  defendant  in  such  cause,  be  de- 
livered to  an  officer  of  the  court,  or  to  the  complainant  to 
be  destroyed." 

Sec.  5.  That  section  five  (5)  of  said  act  be  and  the 
same  is  hereby  amended  to  read  as  follows: 

''Sec.  5.  PEN.U.TY  FOR  APPEOPEiATiNG.  Evcry  pcrsou 
who  shall  use  or  display  the  genuine  label,  trademark, 
term,  design,  device  or  form  of  advertisement  of  any 
such  joerson,  association  or  union  in  any  manner  not 
authorized  by  such  person,  union  or  association,  shall  be 
deemed  guilty  of  a  misdemeanor  and  shall  be  punished 
by  imprisonment  for  not  more  than  three  (3)  months  or 
by  a  fine  of  not  more  than  one  hundred  (100)  dollars. 
In  all  cases  where  such  association  or  union  is  not  in- 
corporated, suits  under  this  act  may  be  commenced  and 
prosecuted  by  any  officer  or  member  of  such  association 
or  union  on  behalf  of  and  for  the  use  of  such  association 
or  union." 

Sec.  6.  That  section  six  (6)  of  this  act  may  be  and 
is  hereby  amended  to  read  as  follows; 

''Sec.  6.  Penalty  fok  unauthoeized  use.  Any  per- 
son who  shall  in  any  way  use  the  name  or  seal  of  any 
such  person,  association  or  union  or  officer  thereof  in 
and  about  the  sale  of  goods  or  otherwise,  not  being 
authorized  to  so  use  the  same,  shall  be  guilty  of  a  mis- 
demeanor, and  shall  be  punishable  by  imprisonment  for 
not  more  than  three  (3)  months,  or  for  a  fine  of  not 
more  than  one  hundred  (100)  dollars." 

Sec.  7.  This  act  shall  take  effect  and  be  in  force  from 
and  after  its  passage. 

Approved  February  23rd,   1895. 

Gen.  St.  1894. 
Section  6908.    Any  person  or  persons  who  shall  know- 
ingly and  wilfully  forge  or  counterfeit,  procure  to  be 
forged    or    counterfeited,    any    representation,    likeness, 


STATE  TRADEMARK  STATUTES.  603 

similitude,  copy  or  imitation  of  the  private  stamps, 
brands,  wrapper,  label  or  trademark,  usually  affixed  by 
any  mechanic,  manufacturer,  druggist,  merchant  or 
tradesman,  to  and  upon  the  goods,  wares,  merchandise 
or  preparation  of  said  mechanic,  manufacturer,  druggist, 
merchant  or  tradesman,  with  intent  to  pass  off  any  work, 
goods,  manufacture,  compound  or  preparation,  to  which 
such  forged  or  counterfeited  representation,  likeness, 
similitude,  copy,  or  imitation  is  affixed,  or  intended  to 
be  affixed,  as  the  work,  goods,  manufacture,  compound 
or  preparation  of  such  mechanic,  manufacturer,  drug- 
gist, merchant  or  tradesman,  shall,  upon  conviction 
thereof,  be  deemed  guilty  of  a  misdemeanor,  and  shall 
be  punished  by  imprisonment  in  the  county  jail  for  a 
IDeriod  [of]  not  less  than  six  months,  nor  more  than 
twelve  months,  or  fined  not  more  than  five  thousand  dol- 
lars. 

Sec.  6909.  Any  person  or  persons  who  shall,  with  intent 
to  defraud  any  person  or  persons,  body  corporate  or 
politic,  have  in  his  or  their  possession  any  die  or  dies, 
plate  or  jDlates,  brand  or  brands,  engraving  or  engrav- 
ings or  printed  labels,  stamps,  imprints,  wrapper,  or 
trademarks,  or  any  representation,  likeness,  similitude, 
copy  or  imitation  of  the  private  stamps,  imprint,  brand, 
wrapper,  label,  or  trademark  usually  affixed  by  any  me- 
chanic, manufacturer,  druggist,  merchant  or  tradesman, 
to  or  upon  articles  made,  manufactured,  prepared  or  com- 
pounded by  him  or  them,  for  the  purj^ose  of  making  im- 
pressions or  selling  the  same  when  made,  or  using  the 
same  upon  any  other  article  made,  manufactured,  pre- 
pared or  compounded,  and  passing  the  same  off  ui)on 
the  community  as  the  original  goods,  manufactures,  prep- 
arations or  compounds  of  any  other  person  or  persons, 
body  corporate  or  politic,  or  who  shall  wrongfully  and 
fraudulently  sell  or  use  the  genuine  stamp,  brand,  im- 
print, wrapper,  label  or  trademark,  with  intent  to  i^ass 
off  any  goods,  wares,  merchandise,  mixtures,  compounds 


604  APPENDIX  H. 

or  other  articles  not  the  manufacture  of  the  person  or 
persons,  body  cori^orate  or  politic,  to  whom  such  stamp, 
brand,  imprint,  wrappers,  label  or  trademark  properly 
belongs,  as  genuine  and  original,  shall,  upon  conviction 
thereof,  be  deemed  guilty  of  a  misdemeanor,  and  shall 
be  punished  by  imprisonment  in  the  county  jail  not  less 
than  six  months,  nor  more  than  twelve  months,  or  be 
fined  not  more  than  five  thousand  dollars. 

Sec.  6910.  Any  person  who  shall  vend  or  keep  for  sale 
any  goods,  wares,  merchandise,  mixture  or  preparation, 
upon  which  any  forged  or  counterfeit  stamps,  brands, 
imprints,  wrappers,  labels  or  trademarks  shall  be  placed 
or  affixed,  and  intended  to  represent  the  said  goods, 
wares,  merchandise,  mixture  or  preparation  as  the  genu- 
ine goods,  wares,  merchandise,  mixture  or  preparation 
of  any  other  person  or  persons,  knowing  the  same  to 
be  counterfeit,  shall,  upon  conviction  thereof,  be  deemed 
guilty  of  a  misdemeanor,  and  shall  be  punished  by  a 
fine  not  exceeding  five  hundred  dollars  in  each  case  so 
offending,  and  shall  also  be  liable  in  a  civil  action  to 
the  person  or  persons  whose  goods,  wares,  merchandise, 
mixture  or  preparation  is  counterfeited  or  imitated,  or 
whose  stamps,  brands,  imprints,  wrappers,  labels,  or 
trademarks  are  forged,  counterfeited,  placed  or  affixed, 
for  all  damages  such  person  or  persons  may  or  shall 
sustain  by  reason  of  any  of  the  acts  in  this  section  men- 
tioned, and  may  be  restrained  or  enjoined  by  any  court 
of  competent  jurisdiction  from  doing  or  performing 
any  of  the  acts  above  mentioned. 

Sec.  6911.  Any  person  or  persons  who  shall,  with 
intent  to  defraud  any  person  or  persons,  body  corporate 
or  politic,  knowingly  affix  or  cause  to  be  affixed  to  or 
upon  any  bottle,  case,  box  or  package  containing  any 
goods,  manufacture,  mixture,  preparation  or  compound, 
any  stamp,  brand,  label,  wrapper,  imprint  or  trade- 
mark, which  shall  designate  such  goods,  manufacture, 
mixture,  preparation    or    compound,  either    wholly    or 


STATE  TRADEMARK  STATUTES.  605 

in  part,  the  same  to  the  eye  or  in  sound  to  the  ear, 
as  the  word  or  words,  or  some  of  the  words,  used  by 
any  6ther  person  or  persons  for  designating  any  goods, 
manufacture,  mixture,  preparation  or  compound  manu- 
factured or  prepared  by  or  for  such  other  person 
or  jjersons,  or  who  shall  knowingly  sell  or  expose,  or 
offer  for  sale,  any  such  bottle,  case,  box  or  package, 
with  any  such  stamp,  brand,  label,  wrapper,  imprint  or 
mark  affixed  to  or  upon  it,  shall,  provided  such  person 
or  persons  so  affixing  or  causing  to  be  affixed  any  such 
stamp,  brand,  label,  wrapper,  imprint  or  mark,  or  to 
selling  or  exposing,  or  offering  for  sale,  any  such  bottle, 
case,  box  or  package,  shall  not  have  been  the  first  to 
employ  or  use  such  words,  to  designate,  wholly  or  in 
part,  any  goods,  manufacture,  mixture,  preparations  or 
compound,  upon  conviction  thereof,  be  deemed  guilty  of 
a  misdemeanor,  and  shall  be  punished  by  imprisonment 
in  the  county  jail  not  less  than  six  nor  more  than  twelve 
months,  or  be  fined  not  more  than  five  thousand  dollars, 
and  shall  also  be  liable  to  the  party  aggrieved  in  the 
penal  sum  of  one  hundred  dollars  for  each  and  every 
offense,  to  be  recovered  by  him  in  a  civil  action. 

Sec.  6912.  Any  person  or  persons  who,  with  intent  to 
defraud,  or  to  enable  another  to  defraud,  any  person, 
shall  manufacture  or  knowingly  sell,  or  cause  to  be  man- 
ufactured or  sold,  any  article  or  articles,  marked, 
stamped  or  branded,  or  incased  or  inclosed  in  any  box, 
bottle  or  wrapper  having  thereon  any  engraving  or  en- 
engravings,  or  printed  labels,  stamps,  imprints,  marks, 
or  trademarks,  which  article  or  articles  are  not  the  man- 
ufacture, workmanship  or  production  of  the  person 
named,  indicated  or  denoted  by  such  marking,  stamping 
or  branding,  or  by  or  upon  such  engraving  or  engrav- 
ings, printed  labels,  stamps,  imprints,  marks  or  trade- 
marks, shall,  upon  conviction  thereof,  be  deemed  guilty 
of  a  misdemeanor,  and  for  such  offense  shall  forfeit  and 
pay  a  fine  of  two  hundred  dollars,  to  be  recovered,  with 


606  APPENDIX  H. 

costs,  in  a  civil  action  to  be  prosecuted  by  the  county 
attorney,  of  any  county  in  the  state,  in  the  name  of  the 
county  in  which  said  action  shall  be  commenced,  and  the 
one-half  of  such  recovery  shall  be  paid  to  the  informer, 
and  the  residue  shall  be  applied  to  the  support  of  the 
poor  in  the  county  where  such  recovery  is  had. 

Sec.  6913.  A  '^ trademark"  is  a  mark  used  to  indicate 
the  maker,  owner  or  seller  of  any  goods,  wares,  mer- 
chandise, mixture,  preparation  or  compound,  and  in- 
cludes, among  other  things,  any  name  of  a  person  or 
corporation,  or  any  letter,  word,  device,  emblem,  figure, 
seal,  stamp,  diagram,  brand,  wrapper,  ticket,  stopper, 
label,  or  other  mark  lawfully  adopted  by  him  and  usu- 
ally affixed  to  any  goods,  merchandise  mixture,  prepara- 
tion or  compound  to  denote  the  same  was  imported,  man- 
ufactured, produced,  sold,  compounded  bottled,  packed 
or  otherwise  prepared  by  him. 

Sec.  6914.  A  trademark  is  deemed  to  be  affixed  to 
any  goods,  wares,  merchandise,  mixture,  preparation  or 
compound  when  it  is  placed  in  any  manner  in  or  upon 
either— 

(1)  The  article  itself;  or 

(2)  A  box,  bale,  barrel,  bottle,  case,  cask,  or  other 
vessel  or  package,  or  a  cover,  wrapper,  stopper,  brand, 
label,  or  other  thing,  in,  by,  or  with  which  the  goods  are 
packed,  inclosed  or  otherwise  prepared  for  sale  or  dis- 
position. 

Sec.  6915.  An  imitation  of  a  trademark,  stamp, 
brand,  wrapper,  or  label  is  that  which  so  far  resembles 
the  genuine  trademark,  stamp,  brand,  wrapper  or  label 
as  to  be  likely  to  induce  the  belief  that  it  is  genuine, 
either  by  the  use  of  words  or  letters  similar  in  appear- 
ance or  in  sound,  or  by  any  sign,  device,  or  the  names 
whatsoever. 

Sec.  6916.  No  testimony  or  evidence  given  by  any 
person  in  any  civil  action  to  which  such  person  may  be 
a  party,  or  by  any  other  witness  in  such  action,  or  on 


STATE   TliADEM.VRK   STATUTES.  607 

any  reference  or  proceeding  wliicli  may  be  had  in  such 
action,  nor  any  evidence  or  testimony  derived  from  the 
books  or  j^apers  of  such  party  or  witness,  produced  by 
him  as  witness,  or  otherwise,  in  such  action,  or  on  any 
reference  or  other  proceedings  which  may  be  had  there- 
in, can  or  shall  be  used  in  any  criminal  i)rosecution 
against  such  party  or  witness,  under  any  of  the  pro- 
visions of  this  act ;  nor  shall  any  pai-ty  or  witness  refuse 
to  testify  or  furnish  evidence  in  any  civil  action  by  rea- 
son of  any  of  the  provisions  of  this  act. 

Minnesota  also  has  an  act  entitled  "An  act  to  protect 
the  owners  of  receptacles  used  in  the  sale  of  soda  waters, 
mineral  or  aerated  water,  porter,  ale,  cider,  ginger  ale, 
small  beer,  large  beer,  Weiss  beer,  beer,  white  beer,  malt 
extracts,  other  beverages,  milk,  cream,  ice  cream  and 
butter,"  approved  April  19,  1905. 

The  statutory  x:)enalty  for  the  infringement  of  a  trade- 
mark can  only  be  recovered  where  the  fraudulent  intent 
of  the  defendant  is  shown. 

Watkins  v.  Landon,  52  Minn.,  389,  54  N.  W.  Kep.  193. 


MISSISSIPPI. 

Ann.  Code  1892. 

Section  1306.  Every  person  who  shall  knowingly  and 
wilfully  forge  or  counterfeit,  or  cause  or  procure  to  be 
forged  or  counterfeited,  any  representation,  likeness, 
similitude,  copy,  or  imitation  of  the  private  stamp,  wrap- 
pers, or  labels  usually  affixed  by  any  mechanic  or  manu- 
facturer to,  and  used  by  such  mechanic  or  manufacturer 
on,  in,  or  about  the  sale  of  any  goods,  wares,  or  mer- 
chandise whatsoever,  shall  be  guilty  of  a  misdemeanor, 
and,  upon  conviction,  shall  be  punished  by  a  fine  not  ex- 
ceeding five  hundred   dollars,   or   imprisonment  in  the 


608  APPENDIX  H. 

county  jail  not  less  than  three  months  nor  more  than 
one  year. 

Sec.  1307.  Every  person  who  shall  have  in  his  pos- 
session any  die,  plate,  engraving,  or  printed  label,  stamp, 
or  wrapper,  or  any  rejDresentation,  likeness,  similitude, 
copy,  or  imitation  of  the  i^rivate  stamp,  wrapper,  or 
label  usually  affixed  by  any  mechanic  or  manufacturer 
to  and  used  by  such  mechanic  or  manufacturer  on,  in, 
or  about  the  sale  of  any  goods,  wares  or  merchandise, 
with  intent  to  use  or  sell  the  said  die,  plate,  or  engrav- 
ing, or  printed  stamp,  label,  or  wrajDper,  for  the  purpose 
of  aiding  or  assisting  in  any  way  whatever  in  vending 
any  goods,  wares,  or  merchandise  in  imitation  of,  or 
intended  to  resemble  and  be  sold  for  the  goods,  wares,  or, 
merchandise  of  such  mechanic  or  manufacturer,  shall  be 
guilty  of  a  misdemeanor,  and,  upon  conviction,  be  pun- 
ished by  fine  not  exceeding  five  hundred  dollars,  or 
imprisonment  in  the  county  jail  not  less  than  three 
months  nor  more  than  one  year. 

Sec.  1308.  Every  person  who  shall  vend  any  goods, 
wares,  or  merchandise,  having  thereon  any  forged  or 
counterfeit  stamp  or  label,  imitating,  resembling,  or 
jourporting  to  be  the  stamp  or  label  of  any  mechanic  or 
manufacturer,  knowing  the  same  to  be  forged  or  counter- 
feited, and  resembling  or  purporting  to  be  imitations  of 
the  stamps  or  labels  of  such  mechanic  or  manufacturer, 
without  disclosing  the  fact  to  the  purchaser  thereof, 
shall  be  guilty  of  a  misdemeanor,  and,  upon  conviction, 
shall  be  punished  by  imprisonment  in  the  county  jail  not 
exceeding  three  months,  or  by  a  fine  not  less  than  fifty 
nor  more  than  five  hundred  dollars,  or  both. 


STATE  TEADEMAEK  STATUTES.  609 

MISSOURI. 

CHAPTER  169,  REVISED  STATUTES.  1899. 

Section  10365.  Any  person  may  adopt  a  trademark — to  be  regis- 
tered. 

Sec.  10366.  Penalty   for  counterfeiting  trademarks. 

Sec.  10367.  Penalty  for  using  false  die,  brand,  etc. 

Sec.  10368.  Penalty  for  keeping  or  selling  goods  with  false  brands. 

Sec.  10369.  Penalty  for  affixing  false  labels,  etc.,  with  intent  to 
defraud. 

Sec.  10370.  What    courts    have    jurisdiction. 

Sec.  10371.  Articles  bearing  false  trademarks  to  be  destroyed. 

Sec.  10372.  What  evidence  can  not  be  used  in  criminal  prosecu- 
tion. 

Section  10365.  Any  person  may  adopt  a  trademark 
—TO  BE  REGISTERED.— If  anv  niecliaiiic,  manufacturer, 
association  or  union  of  workingmen,  or  other  person, 
shall  wish  to  adopt  any  particular  name,  term,  design 
or  device  as  his  or  their  trademark,  to  designate,  make 
known  or  distinguish  any  article  of  goods,  wares  or  mer- 
chandise by  him  or  them  manufactured  or  prepared,  h.e 
or  they  may  write  out  a  description  of  such  name  tenr?, 
design  or  device,  describing  the  same  accurately,  and 
sign  and  acknowledge  the  same  before  some  officer  com- 
petent to  take  the  acknowledgment  of  deeds,  and  file  the 
same,  together  with  a  fac-simile  of  the  name,  term,  de- 
sign or  device  for  registration  in  the  office  of  the  secre- 
tary of  state,  by  leaving  two  copies,  counterparts  or  fac- 
similes thereof,  with  the  secretary  of  state;  said  secre- 
tary shall  deliver  to  such  mechanic,  manufacturer,  asso- 
ciation or  union  of  workingmen  or  other  person  so  filing 
the  same,  a  duly  attested  certificate  of  the  filing  of  the 
same,  for  which  he  shall  receive  a  fee  of  one  dollar; 
such  certificate  shall  in  all  suits  and  prosecutions  under 
this  chapter,  be  sufficient  proof  of  the  adoption  of  such 
label  trademark  or  form  of  advertisement,  and  of  the 
right   of   such   mechanic,   manufacturer,   association   or 

39 


610  APPENDIX  H. 

union  of  workingmen  or  other  jjerson  to  adopt  the  same. 
Xo  label,  trademark  or  form  of  advertisement  shall  be 
registered  that  in  any  way  resembles,  or  would  probably 
be  mistaken  for  a  label  or  trademark  already  registered. 
(R.  S.  1889,  §8569,  amended,  Laws  1893,  p.  260; 
amended.  Laws  1903,  p.  275.) 

Sec.  10366.  Penalty  for  counteefeiting  teade- 
M.\EKs.— Any  person  or  persons,  association  or  union  of 
workingmen,  who  shall  knowingly  and  wilfully  make, 
forge  or  counterfeit  any  representation,  likeness,  simili- 
tude, copy  or  imitation  of  the  private  label,  stamp, 
brand,  wrapper,  engraving,  mould  or  trademark  usually 
affixed  by  any  manufacturer,  mechanic,  merchant,  trades- 
man, druggist,  person  or  body  corporate,  association  or 
union  of  workingmen,  or  body  politic  to,  ui)on  or  used 
in  connection  with  the  goods,  wares,  merchandise,  com- 
pound or  preparation  of  such  manufacturer,  mechanic, 
merchant,  tradesman,  druggist,  person,  association  or 
union  of  workingmen,  or  body  corporate  or  politic,  with 
intent  to  pass  off  any  goods,  wares,  merchandise,  com- 
pound or  preparation,  to  which  said  forged  or  counter- 
feit representation,  likeness,  similitude,  copy  or  imita- 
tion is  affixed,  or  in  connection  with  which  the  same 
may  be  used  or  intended  to  be  so  affixed  or  used,  as  the 
work,  goods,  wares,  implements,  merchandise,  compound 
or  preparation  of  such  manufacturer,  mechanic,  mer- 
chant, druggist,  tradesman,  person,  association  or  union 
of  workingmen,  or  body  corporate  or  politic,  shall,  upon 
conviction  thereof,  be  deemed  guilty  of  a  misdemeanor, 
and  shall  be  punished  by  imprisonment  in  the  county 
jail  for  a  period  of  not  less  than  three  months  nor 
more  than  twelve  months,  or  fined  not  less  than  one 
hundred  dollars  nor  more  than  five  thousand  dollars,  or 
both  such  fine  and  imprisonment.  (R.  S.  1889,  §  8570, 
amended  Laws  1893,  p.  260.) 

Sec.  10367.    Penalty  foe  using  false  die,  beand,  etc, 
—Any  person  or  persons,  association  or  union  of  work- 


STATE  TR.VDEMARK   STATUTES.  611 

ingmen,  who  shall,  with  intent  to  defraud  any  i^erson  or 
persons,  or  body  corporate  or  politic,  have  in  his,  her  or 
their  possession  any  die  or  dies,  plate  or  plates,  brand 
or  brands,  engraving  or  engravings,  printed  labels, 
stamps,  imprints,  moulds,  wrappers  or  trademarks,  or 
any  representation,  likeness,  similitude,  copy  or  imi- 
tation of  the  private  label,  brand,  stamp  or  wrapper, 
engraving,  mould  or  trademark  usually  affixed  by  any 
manufacturer,  mechanic,  merchant,  tradesman,  druggist, 
association  or  union  of  workingmen,  person  or  body  cor- 
porate or  politic,  to,  upon  or  used  in  connection  with 
articles  made,  manufactured,  prepared  or  compounded 
by  him,  her  or  them,  for  the  purpose  of  making  impres- 
sions, or  selling  the  same  when  made,  or  using  the  same 
upon  or  in  connection  with  any  other  article  made, 
manufactured,  prepared  or  compounded,  and  passing 
the  same  off  upon  the  community  as  the  original  goods, 
wares,  implements,  merchandise,  compound  or  prepara- 
tion of  any  other  person  or  persons,  association  or 
union  of  workingmen,  or  body  corporate  or  politic,  or 
who  shall  in  fact  sell  or  use  the  same,  or  for  the  purpose 
of  secreting  the  same  from  the  rightful  owner  or  own- 
ers, or  who  shall  wrongfully  or  fraudulently  use  the 
genuine  label,  brand,  stamp,  wrapper,  imprint,  engrav- 
ing, mould  or  trademark,  with  intent  to  pass  off  any 
goods,  wares,  implements,  merchandise,  compound  or 
preparation,  or  other  article  not  the  manufacture  of  the 
person,  persons,  association  or  union  of  workingmen, 
or  body  corporate  or  politic,  to  whom  such  label,  brand, 
stamp,  wrapiDer,  engraving,  imprint,  mould  or  trade- 
mark properly  belongs,  as  genuine  and  original,  shall, 
upon  conviction  thereof,  be  deemed  guilty  of  a  misde- 
meanor, and  shall  be  punished  by  imprisonment  in  the 
county  jail  not  less  than  three  months  nor  more  than 
twelve  months,  or  fined  not  less  than  one  hundred  dol- 
lars nor  more  than  five  thousand  dollars,  or  both  such 


612  APPENDIX  H. 

fine  and  imprisonment.     (E.  S.  1889,  §  8571,  amended, 
Laws  1893,  p.  260.) 

Sec.  10368.  Penalty  for  keeping  or  selling  goods 
wiTfi  FALSE  BRANDS.— Any  pcrson,  persons,  association 
or  union  of  workingmen,  or  body  corporate  or  politic, 
who  shall  vend  or  keep  for  sale  any  goods,  wares,  mer- 
chandise, compounds  or  preparations  upon  which  or  in 
connection  with  which  any  forged,  imitation  or  counter- 
feit label,  brand,  stamp,  wrapper,  imprint,  engraving, 
bottle  or  trademark  shall  be  placed,  affixed  or  used,  and 
intended  to  represent  the  said  goods,  wares,  implements, 
merchandise,  compounds  or  ]orei3a rations  as  the  genuine 
goods,  wares,  implements,  merchandise  compound  or 
preparation  of  any  other  person  or  persons,  association 
or  union  of  workingmen,  or  body  corporate  or  politic, 
knowing  the  same  to  be  imitation  or  counterfeit,  shall 
be  deemed  guilty  of  a  misdemeanor,  and,  upon  convic- 
tion thereof,  shall  be  punished  by  a  fine  of  not  less  than 
one  hundred  dollars  nor  more  than  five  thousand  dollars, 
or  by  imprisonment  in  the  county  jail  not  less  than  one 
month  nor  more  than  twelve  months,  or  both,  and  shall 
also  be  liable  to  a  civil  action  to  the  person  or  persons, 
association  or  union  of  workingmen,  or  body  corporate 
or  politic,  whose  goods,  wares,  implements,  merchandise, 
compounds  or  preparations  is  imitated  or  counterfeited, 
or  whose  label,  stamp,  wrapper,  engraving,  imprint,  bot- 
tle, or  trademark  is  imitated,  forged  or  counterfeited, 
placed,  affixed  or  used,  for  aJl  damages  such  person  or 
persons,  association  or  union  of  workingmen,  or  body 
corporate  or  politic,  may  or  shall  sustain,  both  by  virtue 
of  the  loss  of  profits  and  the  damage  done  to  the  reputa- 
tion of  the  said  genuine  article,  goods,  wares,  imple- 
ments, merchandise,  compound  or  preparation,  by  rea- 
son of  any  of  the  acts  in  any  section  of  this  chapter 
mentioned,  and  may  be  restrained  or  enjoined  by  any 
court  of  competent  jurisdiction  from  doing  or  perform- 


STATE  TRADEMARK  STATUTES  613 

ing   any   of   the   acts   herein   mentioned.      (K.   S.    1889, 
§8572,  amended,  Laws  1893,  p.  260.) 

Sec.  103G9.     Penalty  eok  atfixing  false  labels,  etc., 
WITH  INTENT  TO  DEFKAUD.— Any  j^erson  or  persons  who 
shall,  with  intent  to  defraud  any  person  or  persons,  as- 
sociation or  union  of  workingmen,  or  body  corporate  or 
politic,    knowingly    afiBx    or    cause    to    be   affixed   to   or 
upon  any  case,  box,  web,  package  or  bottle  containing 
any  goods,  wares,  merchandise,  compound  or  prepara- 
tion, any  label,  brand,  stamp,  wrapper,  engraving,  im- 
print or  mark  which  shall  designate  such  goods,  wares, 
merchandise,  compound  or  preparation,  either  wholly  or 
in  part  by  a  word  or  words,  or  by  general  design,  which 
shall  be  wholly  or  in  part  the  same  to  the  eye,  or  in 
sound  to  the  ear,  as  the  word  or  words  or  the  general 
design  used  by  any  person  or  persons,  association  or 
union  of  workingmen,  or  body  corporate  or  politic,  for 
designing    any    goods,    wares,    merchandise,    compound 
or   preparation,   manufactured   or   prepared   by   or   for 
some  other  person  or  persons,  association  or  union  of 
workingmen,  or  body  corporate  or  politic,  or  who  shall 
knowingly  sell  or  expose  or  otfer  for  sale  any  such  case, 
box,  web,  package,  or  bottle,  with  any  such  label,  brand, 
stamp,  wrapper,  engraving,  imprint  or  mark  affixed  to 
or  upon  it,  shall,  provided  such  person  or  persons  affix- 
ing or  causing  to  be  affixed  any  such  label,  brand,  stamp, 
wrapper,  engraving,  imprint  or  mark  or  so  selling  or 
offering  for  sale  any  such  case,  box,  web,  package  or 
bottle,  shall  not  have  been  the  first  to  employ  or  use 
such   word   or   words   or  general   design   to   designate, 
wholly  or  in  part,  any  goods,  wares,  mechandise,  com- 
pound or  ])reparation,  and  upon  conviction  thereof  be 
deemed  guilty  of  a  misdeameanor,  and  shall  be  liable  to 
the  party  aggrieved  in  the  penal  sum  of  five  hundred 
dollars,   and   for   a   further   sum   equal   to  the   amount 
which  the  aggrieved  party  might  have  received  for  the 
same  amount  of  genuine  goods,  wares,  merchandise,  com- 


614  APPENDIX  II. 

pounds  or  preparations,  and  shall  be  guilty  of  a  misde- 
meanor, and  on  conviction  may  be  punished  by  im- 
prisonment in  the  county  jail  for  a  period  of  not  less 
than  one  month  nor  more  than  twelve  months  or  fined 
not  less  than  one  hundred  dollars,  nor  more  than  five 
thousand  dollars,  or  both  such  fine  and  imprisonment. 
(R.  S.  1889,  §8573,  amended.  Laws  1893,  p.  260.) 

Sec.  10370.  What  courts  have  jurisdiction.— All 
courts  of  this  state  having  jurisdiction  of  criminal  cases 
shall  have  jurisdiction  of  proceedings  for  violaton  of 
this  chapter.  All  suits  brought  under  this  chapter  shall 
be  brought  by  the  person  or  persons  injured  or  de- 
frauded by  such  parties ;  and  if  brought  by  any  asso- 
ciation or  union  of  workingmen,  the  suit  may  be  brought 
in  the  name  of  the  president  and  secretary,  to  the  use 
and  benefit  of  association  or  corporation,  and  may  thus 
sue  and  be  sued.  (R.  S.  1889,  §  8574,  amended.  Laws 
1893,  p.  260.) 

Sec.  10371.  Articles  bearing  false  trademarks  to 
BE  DESTROYED.— It  shall  bc  the  duty  of  any  officer  within 
the  jurisdiction  of  the  court  having  authority,  to  whom 
there  shall  be  delivered  any  warrant  for  the  arrest  of 
any  person  alleged  to  have  committed  any  offense  cre- 
ated by  this  chapter,  to  seize  any  and  all  goods,  wares, 
merchandise,  compounds,  preparations,  labels,  brands, 
implements,  stamps,  wrappers,  imprints,  engravings, 
plates,  bottles,  dies  or  moulds,  mentioned  or  referred  to 
in  the  complaint,  or  affidavit  or  information,  upon  which 
said  warrant  issued,  and  upon  final  conviction  of  the 
offended,  the  court  shall  direct  such  of  same  as  may  be 
counterfeit  to  be  destroyed,  and  they  shall  be  so  de- 
stroyed accordingly:  Provided,  hoicever,  That  if  said 
property  consists  of  wares  and  merchandise,  which,  in 
the  judgment  of  the  court,  are  independent  of  any  trade- 
mark, of  genuine  and  intrinsic  value,  and  capable  of 
being  applied  to  a  useful  and  beneficial  purpose,  then 
and  in  such  case  all  counterfeit  words,  marks,  wrappers, 


STATE   TR.VDEMARK   STATUTES.  615 

labels,  emblems,  stamps,  brands,  bottles,  imprints  and 
signs  used  in  connection  therewith  shall  be  first  erased, 
obliterated  and  destroyed,  and  said  property  shall  be 
sold  within  ten  days  next  succeeding  the  decision  of  the 
court  thereon,  in  such  manner  as  the  court  shall  direct, 
and  the  proceeds  of  said  sale,  less  the  expense  thereof, 
be  applied  to  the  benefit  of  the  school  fund  of  the  county 
in  which  said  seizure  was  effected.  (K.  S.  1889,  §8575, 
amended.  Laws  1893,  p.  260.) 

Sec.  10372.  What  evidence  shall  not  be  used  in 
CRIMINAL  PROSECUTIONS.— No  tostimouy  or  evidence  given 
by  any  person  in  any  civil  action  to  which  said  person 
may  be  a  party,  or  by  any  other  witness  in  such  action, 
or  in  any  reference  or  proceeding  which  may  be  had  in 
such  action,  nor  any  testimony  or  evidence  derived  from 
the  books  or  papers  of  such  party  or  witness,  or  other- 
wise, in  such  action,  or  in  any  reference  or  other  pro- 
ceeding which  may  be  had  therein,  can  or  shall  be  asked 
in  any  criminal  prosecution  against  such  party  or  wit- 
ness, under  any  of  the  privisions  of  this  chai^ter,  nor 
shall  any  party  or  witness  refuse  to  testify  or  furnish 
evidence  in  any  civil  action  by  reason  of  any  of  the  pro- 
visions of  this  chapter.  (R.  S.  1889,  §  8576,  amended, 
Laws  1893,  p.  260.) 

§§2270-2274,  Revised  Statutes  1899,  provide  for  the 
protection  of  boxes  and  other  receptacles,  used  by  manu- 
facturers of  bottles,  bottlers,  manufacturers  of  and  deal- 
ers in  mineral  waters,  soda  waters,  and  other  beverages, 
the  description  of  the  names,  marks,  or  designations  to 
be  recorded  with  the  recorder  of  deeds  of  the  county  or 
city.  §  2274  contains  provisions  for  search  warrants  in 
such  cases. 

Under  §  10369  an  information  which  sets  out  and  con- 
tains a  copy  of  the  defendant's  label,  and  of  the  label 
which  the  defendant's  label  is  alleged  to  imitate,  and 
which    alleges    that   the   defendant's   label   imitates   the 


616  APPENDIX  H. 

other  ''in  part"  but  does  not  state  what  part  of  the  one 
is  an  imitation  of  the  other,  is  fatally  defective. 

State  V.  Thierauf,  167  Mo.  429,  67  S.  W.  Rep.  292. 

An  information  in  a  prosecution  for  selling  cigars  in 
boxes  bearing  a  counterfeit  union  label,  in  which  a 
genuine  union  label  was  pasted,  was  approved  in  State 
V.  Niesmann,  101  Mo.  App.  507,  74  S.  W.  Rep.  638. 

An  act  of  1893,  for  the  protection  of  union  labels  has 
been  held  not  to  be  in  violation  of  Article  4,  §  53  of  the 
Constitution  of  Missouri;  and  that  to  sustain  a  convic- 
tion, guilty  knowledge  by  the  defendant  must  be  shown. 

State  V.  Bishop,  128  Mo.  373,  31  S.  W.  Eep.  9. 

The  early  act  against  counterfeiting  trademarks 
(Wag.  St.  p.  1330)  was  held  to  be  designed  for  the  pro- 
tection of  trademarks,  regardless  of  the  citizenship  of 
their  owners.  It  might,  therefore,  be  invoked  in  a  prose- 
cution based  upon  a  trademark  owned  by  a  citizen  of 
another  country. 

State  V.  Gibbs,  56  Mo.  133. 

FORMS   OP  APPLICATION   FOR   REGISTRATION. 
FORM   FOR   CORPORATION. 

Enow  all  men  ty  these  presents: 

That  the  ,  a  corporation  duly  organized  and  existing  under 

the  laws  of  the  State  of  ,  and  having  its  office  in  the  City  of 

said  State,  desiring  to  avail  itself  of  the  provisions  of  chapter 

169,  Revised  Statutes  of  1899,  and  more  particularly  of  section  10,365 
thereof,  as  amended  in  1903,  has  adopted  for  its  use  a  trademark  to 
designate,  make  known  or  distinguish  a  certain  article  of  goods,  ware 
or  merchandise  by  it  manufactured  or  prepared,  of  which  the  follow- 
ing is  a  description: 

the  essential  feature  of  which  the  ,  as  applied  to 

;  and  that  the  fac-similes  presented  herewith  are  true  and  cor- 
rect copies  thereof.  , 

In  testimony  whereof,  the  said  corporation  has  caused  this  instru- 
ment to  be  signed  by  its and  the  seal  of  said  corporation  to  be 

hereto  attached,  at  the  City  of  ,  State  of  ,  this  ^ 

day  of ,  190—. 

[seal.] 

(President  or  other  duly  authorized  officer.) 


STATE   TRADEMARK   STATUTES.  617 


--} 


State  of  — 
County  of 

On  this day  ,  190 — ,  before  me  appeared  ,  to  me 

personally  known,  who,  being  by  me  duly  sworn  did  say  that  he  Is  the 

— of  the  said ,  a  corporation,  and  that  the  seal  afhxed  to  the 

foregoing  instrument  is  the  corporate  seal  of  said  corporation,  and 
that  said  instrument  was  signed  and  sealed  in  behalf  of  said  corpora- 
tion by  authority  of  its  board  of  directors,  and  said  acknowl- 
edged said  instrument  to  be  the  free  act  and  deed  of  said  corporation, 
for  the  purpose  therein  stated. 

In  testimony  whereof,  I  have  hereunto  set  my  hand  and  affixed  ray 

seal  at  my  office  in  the  City  of  the  day  and  year  last  above 

written. 

My  commission  expires  . 


Notary  Public. 

FORM  FOR  INDIVIDUALS  OR  PARTNERSHIPS. 

Know  all  men  by  these  presents: 

That  I,  ,  residing  in  the  City  of ,  State  of ,  have 

adopted  for  my  use  a  trademark  to  designate,  make  known  or  dis- 
tinguish a  certain  article  of  goods,  wares  or  merchandise  by  me  manu- 
facturer or  prepared,  of  which  the  following  is  a  description: 

the   essential   feature   of   which   the  ,   as   applied   to 

;  and  that  the  fac-similes  presented  herewith  are  true  and  cor- 
rect copies  thereof. 

In   testimony  whereof,   I   have  hereunto  set  my  hand  at  the  City 
of ,  State  of ,  this day  of ,  190—. 


State  of  — 
County  of 


-} 


On  this  day  of  ,  190 — ,  before  me  personally  appeared 

-,  to  me  known  to  be  the  person  described  in  and  who  executed 


the  foregoing  instrument,  and  acknowledged  that  he  executed  the  same 
as  his  free  act  and  deed. 

In  testimony  whereof,   I   have   hereunto   set   my   hand   and   affixed 

my  seal  at  my  office  in  the  City  of the  day  and  year  last  above 

written.     My   commission  expires   . 


Notary  Public. 
Note. — The  application  for  registration  must  be  executed  in  dupli- 
cate.    In  other  words,  two  originals. 


618  APPENDIX  H. 

MONTANA. 
Political  Code. 

Section  3161.  Any  person  may  record  any  trade- 
mark or  name,  by  filing  with  the  Secretary  of  State  his 
claim  to  the  same,  and  a  copy  or  description  of  such 
trademark  or  name,  with  his  affidavit  attached  thereto,  cer- 
tified to  by  an  officer  authorized  to  take  acknowledgments 
of  conveyances,  setting  forth  that  he  or  the  firm  or  corpo- 
ration of  which  he  is  a  member,  is  the  exclusive  owner, 
or  agent  of  the  owner  of  such  trademark  or  name. 

Sec.  3162.  The  Secretary  of  State  must  keep  for  pub- 
lic examination  a  record  of  all  trademarks  or  names  filed 
in  his  office,  with  the  date  when  filed  and  the  name  of  the 
claimant,  and  must  not  record  any  two  like  trademarks 
or  names.  He  must  at  the  time  of  filing  and  recording 
a  trademark  or  name,  collect  from  the  claimant  a  fee  of 
three  dollars. 

Approved  Feb.  25,  1899. 

Penal  Code. 

§  642.  Every  person  who  shall  use  any  counterfeit  or 
imitate  any  label,  trademark  or  form  of  advertisement 
of  any  such  person,  union  or  association,  knowing  the 
same  to  be  counterfeit  or  imitation,  shall  be  guilty  of 
a  misdemeanor. 

(§642.     Act  approved  March  6,  1895.) 

§  643.  Every  such  person,  association  or  union  that 
heretofore  adopted,  or  shall  hereafter  adopt,  a  label, 
trademark  or  form  of  advertisement  as  aforesaid  may 
file  the  same  for  record  in  the  office  of  the  Secretary  of 
State,  by  leaving  two  copies,  counterparts  or  fac-similes 
thereof  with  the  Secretary  of  State ;  said  secretary  shall 
deliver  to  such  person,  association  or  union  filing  the 


STATE   TR.^J)EMARK   STATUTES.  619 

same  a  duly  attested  certificate  of  the  record  of  the 
same,  for  which  he  shall  receive  a  fee  of  one  dollar. 
Such  certificate  of  record  shall  in  all  suits  and  prosecu- 
tions under  this  act  be  sufficient  proof  of  the  adoption 
of  such  label,  trademark  or  form  of  advertisement,  and 
of  the  right  of  said  jiierson,  association  or  union  to  adopt 
the  same.  No  label  shall  be  recorded,  that,  probably, 
would  be  mistaken  for  a  label  already  of  record. 
(§643.    Act  approved  March  6,  1895.) 


NEBRASKA. 

Compiled  Statutes  1901. 

Section  6810.  If  any  person  shall  falsely  make,  alter, 
forge,  counterfeit,  print  or  photograph  *  *  *  ^^y 
private  stamp,  brand,  wrapj^er,  label,  or  trademark, 
usually  affixed  by  any  mechanic,  manufacturer,  druggist, 
merchant,  or  tradesman  to  or  upon  the  goods,  wares, 
merchandise,  preparation  or  mixture  of  such  mechanic, 
manufacturer,  druggist,  merchant,  or  tradesman;  *  *  * 
with  intent  to  damage  or  defraud  any  person  or  persons, 
body  politic  or  corporate,  or  ay  military  body  organ- 
ized under  the  laws  of  this  state ;  or  shall  utter  or  pub- 
lish as  true  and  genuine,  or  cause  to  be  uttered  and  pub- 
lished as  genuine  and  true,  or  shall  have  in  his  j^osses- 
sion  with  intent  to  utter  and  i3ublish  as  true  and  genuine, 
any  of  the  above  named  false,  altered,  forged,  counter- 
feited, falsely  printed,  or  photographed  matter  above 
specified  and  described,  knowing  the  same  to  be  false, 
altered,  forged,  counterfeited,  falsely  printed,  or  photo- 
graphed, with  intent  to  prejudice,  damage  or  defraud 
any  person  or  persons,  body  politic  or  corporate.  Eveiy 
person  so  offending  shall  be  imprisioned  in  the  i'>eniten- 
tiary  for  any  space  of  time  not  exceeding  twenty  years 


620  APPENDIX  H. 

nor  less  than  one  year,  and  pay  fine  not  exceeding  five 
hundred  dollars. 

Sec.  6811.  If  any  person  shall  have  in  his  possession 
any  die  or  dies,  plate  or  plates,  brand  or  brands,  engrav- 
ing, imjDrint,  printed  labels,  wrappers,  or  any  other  in- 
strument, thing  or  means  whatever  with  intent  therewith 
or  thereby  to  falsely  make,  forge,  or  counterfeit  any 
matter  specified  in  the  last  preceding  section,  or  to  cause 
or  enable  the  same  to  be  done;  or  shall  have  in  his  pos- 
session any  such  falsely  made,  forged,  or  counterfeited 
matter  whether  the  same  be  completed  or  only  partly 
executed,  for  the  purpose  of  bartering,  selling,  or  dispos- 
ing thereof,  knowing  the  same  to  be  falsely  made,  forged 
or  counterfeited,  with  intent  thereby  to  prejudice,  dam- 
age or  defraud  any  person  or  persons,  body  politic  or 
corporate,  every  person  so  offending  shall  be  imprisoned 
in  the  penitentiary  not  less  than  six  months  nor  more 
than  ten  years,  and  pay  a  fine  not  exceeding  one  thou- 
sand dollars. 

Sec.  6814.  Any  person  who  shall  vend  or  keep  for 
sale  any  goods,  merchandise,  mixture  or  preparation, 
upon  which  any  forged  or  counterfeit  stamps,  brands, 
imprints,  wrappers,  labels,  or  trademarks  be  placed  or 
affixed,  and  intended  to  represent  the  said  goods,  mer- 
chandise, mixture  or  preparation,  as  the  true  and  genu- 
ine goods,  merchandise,  mixture  or  preparation  of  any 
IDerson  or  persons,  knowing  the  same  to  be  counterfeit, 
shall  be  punished  by  a  fine  not  exceeding  one  hundred 
dollars. 

§§  6922,  6926,  are  directed  to  the  protection  of  casks, 
barrels,  kegs,  bottles  and  boxes,  used  in  the  handling 
of  soda  water,  mineral  water  and  other  beverages. 

§§  3549,  3553,  relate  to  the  protection  of  the  labels  of 
trade  unions  and  their  registration  with  the  Secretary 
of  State. 


STATE   TRADEM.UiK    STATUTES.  621 

NEVADA. 

COMPILED   LAWS.    1900. 

AN    ACT    concerning    trademarks    and    names.      Approved    March    8, 

1865,  268. 

5040.  Section  1.  Unlawful  to  imitate.— AMien  a 
person  who  has  complied  with  the  provisions  of  section 
two  of  tliis  act,  uses  any  particular  name,  letters,  marks, 
device,  figures  or  other  trademark  or  name,  cut,  stamped, 
cast  or  engraved  upon,  or  in  any  manner  attached  to 
or  connected  with  any  article,  or  with  the  covering  or 
wrapping  thereof,  manufactured  or  sold  by  him,  to  desig- 
nate it  as  an  article  of  a  peculiar  kind,  character,  or 
quality,  or  as  an  article  manufactured  or  sold  by  him, 
or  if  such  trademark  or  name  be  so  connected  with  any 
bottle,  box,  cask,  or  other  thing  used  for  holding  such 
article,  it  shall  be  unlawful  for  any  other  person,  with- 
out his  consent  to  use  said  trademark  or  name,  or  any 
similar  trademark  or  name,  for  the  purj^ose  of  repre- 
senting any  article  to  have  been  manufactured  or  sold 
by  the  person  rightfully  using  such  trademark  or  name, 
or  to  be  of  the  same  kind,  character,  or  quality  as  that 
manufactured  or  sold  by  the  i3erson  rightfully  using 
such  trademark  or  name. 

5041.  Sec.  2.  Claim  filed.— Any  person  wishing  to 
secure  the  exclusive  use  of  any  such  trademark  or  name 
imder  the  provisions  of  this  act,  shall  Sle  his  claim  to 
the  same,  and  a  copy  or  description  of  such  trademark 
or  name,  with  the  Secretary  of  State. 

5042.  Sec.  3.  Fee  foe  filing.— The  Secretary  of  State 
shall  keep  a  record  of  all  trademarks  or  names  filed  in 
his  office  with  the  date  when  filed  and  name  of  claim- 
ant, for  public  examination.  A  fee  of  five  dollars  ?hall 
be  paid  to  the  Secretary  of  State  at  the  time  of  filing 


622  APPENDIX  H. 

each  copy  and  description  of  any  trademark  or  name, 
by  the  party  claiming  the  use  and  benefit  of  the  same. 
It  is  hereby  made  the  duty  of  the  Secretary  of  State  to 
pay  all  fees  accruing  under  this  section  into  the  State 
Librarj^  Fund.  (As  amended,  Statutes  1893,  page  80, 
reducing  charge  of  filing  and  recording  trademarks  and 
names  from  $20  to  $5.) 

5043.  Sec.  4.  Any  person  violating  the  provisions  of 
the  first  section  of  this  act  shall  be  guilty  of  a  misde- 
meanor, and  on  conviction  thereof  shall  be  punished  by 
a  fine  of  not  less  than  twenty-five  dollars,  nor  more  than 
five  hundred  dollars  or  by  imprisonment  in  the  county 
jail  for  not  less  than  five  days,  nor  more  than  thirty 
days,  or  by  both  such  fine  and  imprisonment;  and  he 
shall  be  further  liable  to  any  party  aggrieved  by  such 
violation  for  all  damages  actually  incurred,  to  be  re- 
covered as  a  debt  in  any  court  of  competent  jurisdiction. 

5044.  Sec.  5.  It  shall  be  unlawful  for  any  person  to 
counterfeit  any  trademark  or  name,  or  to  have  or  use  a 
counterfeit  trademark  or  name,  or  sell  any  article  bear- 
ing or  having  in  any  way  conected  with  it  a  counterfeit 
trademark  or  name,  which  has  been  filed  according  to 
section  two  of  this  act,  knowing  it  to  be  such,  or  having 
good  and  sufficient  reason  to  know  it  to  be  such.  Every 
alteration  or  imitation  of  any  trademark  or  name  which 
has  been  filed  according  to  section  two  of  this  act  which 
shall  be  made,  applied,  or  used,  or  which  shall  cause  any 
trademark  or  name,  with  such  alterations  or  imitations, 
to  resemble  any  genuine  trademark  or  name,  so  as  to  be 
calculated  or  likely  to  deceive,  shall  be  deemed  to  be  a 
counterfeit  trademark  or  name  within  the  meaning  of 
this  act  and  every  act  of  making,  applying,  or  otherwise 
using  any  such  alteration  or  imitation  as  aforesaid,  done 
by  any  person,  such  person  shall  be  deemed  to  be  guilty 
of  counterfeiting  a  trademark  or  name,  or  knowingly  using 
a  counterfeit  trademark  or  name,  within  the  meaning  of 
this  act.     Every  person  violating  the  provisions  of  this 


STATE    TRADEMARK    STATUTES.  623 

section  shall  be  guilty  of  a  misdemeanor,  and  on  con- 
viction thereof  shall  be  punished  as  provided  in  section 
four  of  this  act. 

5045.  Sec.  6.  Everj^  person  who  shall  have  or  use 
any  cask,  bottle,  vessel,  case,  cover,  label,  or  other  thing, 
bearing  or  having  in  any  way  connected  with  it  the 
trademark  or  name  of  another,  which  has  been  filed  ac- 
cording to  section  two  of  this  act,  for  the  purpose  of  dis- 
posing of  any  article  with  intent  to  deceive  or  defraud, 
other  than  that  which  said  cask,  bottle,  vessel,  case, 
cover,  label,  or  other  thing  originally  contained,  or  was 
connected  with  by  the  owner  of  said  trademark  or  name, 
shall  be  guilty  of  a  misdemeanor,  and  on  conviction 
thereof  shall  be  punished  as  provided  in  section  four  of 
this  act. 

5046.  Sec.  7.  Every  person  who  shall  knowingly,  aid, 
or  abet,  or  counsel  in,  or  procure  the  commission  of  any 
offense  which  is  by  this  act  made  a  misdemeanor,  shall 
be  deemed  and  held  to  be  guilty  of  a  misdemeanor,  and 
shall  be  subject  to  the  penalties  provided  in  section  four 
of  this  act. 

5047.  Sec.  8.  This  act  shall  not  be  so  construed  as  to 
permit  any  person  to  file,  without  authority  from  the 
owner,  any  trademark  or  name  owned,  or  previously 
used  by  another  person,  nor  in  any  way  to  interfere 
with,  hinder,  prevent,  or  restrain  the  importation  or 
sale,  by  any  person,  of  genuine  articles  of  merchandise 
having,  or  belonging  thereto,  genuine  trademarks  or 
names  manufactured  or  sold  in  other  states  or  countries. 

5048.  Sec.  9.  Any  person  who  has  first  adopted  and 
used  a  trademark  or  name,  whether  within  or  beyond  the 
limits  of  this  state,  shall  be  considered  its  original 
owner,  and  the  ownership  may  be  transferred  in  the 
same  manner  as  personal  property,  and  shall  be  entitled 
to  the  same  protection  by  suits  at  law  as  other  personal 
property. 


624  APPENDIX  H. 

5049.  Sec.  10.  Every  person  filing  with  the  secre- 
tary of  state  as  provided  in  section  two  of  this  act,  his 
claim  to  any  trademark  or  name,  shall  have  attached  to 
the  copy  and  description  thereof  his  affidavit,  duly  certi- 
fied to  by  any  officer  authorized  by  the  laws  of  this  state 
to  take  acknowledgments  of  conveyances,  setting  forth 
that  he  (or  the  firm  or  corporation  of  which  he  is  a 
member)  is  the  exclusive  owner  or  agent  of  the  accom- 
panying trademark  or  name. 

5050.  Sec.  11.  Any  court  of  competent  jurisdiction 
may  restrain,  by  injunction,  any  use  of  trademarks  or 
names  in  violation  of  any  section  of  this  act. 

5051.  Sec.  12.  No  person  otherwise  competent  as  a 
witness,  shall  be  disqualified  or  excused  from  testifying 
as  a  witness,  either  before  a  grand  jury  or  a  petit  jury 
or  otherwise,  concerning  any  offense  mentioned  in  this 
act,  on  the  ground  that  his  testimony  may  criminate  him- 
self, but  such  testimony  shall  be  reduced  to  writing,  and 
no  indictment  or  prosecution  shall  afterward  be  brought 
against  him  for  said  offenses,  concerning  which  he  has 
testified  as  a  witness. 

5052.  Sec.  13.  Any  witness  called  to  give  testimony 
on  behalf  of  the  state,  before  any  grand  jury,  or  before 
any  court  of  justice  shall  be  required  to  give  such  tes- 
timony, which  shall  be  reduced  to  writing,  and  such  wit- 
ness shall  not  be  liable  to  suffer  any  punishment  or  for- 
feiture for  any  offense  against  the  provisions  of  this  act 
so  disclosed. 


STATE  TRADEil^UtK  STATUTES.  625 

NEW  HAMPSHIRE. 

LAWS  1895,  CH.  42. 

AN  ACT  to  protect  associations  and  unions  of  workingmen  and  per- 
sons in  their  labels,  trademarks  and  forms  of  advertising,  and 
the  owners  of  literary,  dramatic  and  musical  compositions,  and 
works  of  art  in  their  property. 

Be  it  enacted  hy  the  Senate  and  House  of  Representa- 
tives in  General  Court  convened: 

Section  1.  "\\T3enever  any  person,  association,  or 
union  of  workingmen  have  adopted,  or  shall  hereafter 
adopt,  for  their  protection,  any  label,  trademark,  or 
form  of  advertisement  announcing  that  goods  to  which 
such  label,  trademark,  or  forai  of  advertisement  shall 
be  attached  were  manufactured  by  such  jDcrson,  or  by  a 
member  or  members  of  such  association  or  union,  it 
shall  be  unlawful  for  any  person  or  corporation  to 
counterfeit  or  imitate  such  label,  trademark,  or  form  of 
advertisement.  And  whenever  any  person,  firm,  asso- 
ciation, or  corporation  is  the  owner  of  any  literary,  dra- 
matic or  musical  composition  and  the  right  of  the  au- 
thor pertaining  thereto,  and  such  composition  has  not 
been  copyrighted,  printed  or  published,  or  of  any  map, 
chart,  engraving,  cut,  print,  photograph,  or  negative 
thereof,  statue,  statuary,  model,  or  design,  which  has 
not  been  copyrighted  or  offered  for  sale,  it  shall  be 
unlawful  for  any  other  person,  firm,  association,  or  cor- 
poration to  publish,  produce,  print,  or  sell  or  offer  to 
sell  the  same  without  first  obtaining  the  consent  of  the 
owner  thereof. 

Sec.  2.  Every  person  who  shall  use  any  counterfeit 
or  imitation  of  any  label,  trademark,  or  form  of  adver- 
tisement of  any  such  person,  union,  or  association,  know- 
ing the  same  to  be  counterfeit  or  imitation,  shall  be 
guilty  of  a  misdemeanor,  and  shall  be  punished  as 
provided  in  section  7  of  this  act. 

40 


626  APPENDIX  H. 

Sec.  3.  Every  such  person,  association  or  union  that 
has  heretofore  adopted  or  shall  hereafter  adopt,  a  label, 
trademark,  or  form  of  advertisement,  as  aforesaid,  may 
file  the  same  for  record  in  the  office  of  the  secretary  of 
state,  by  leaving  two  copies,  counterparts  or  fac-similes 
thereof  with  the  secretary  of  state;  and  the  secretary- 
shall  deliver  to  such  person,  association  or  union  so  fil- 
ing the  same  a  duly  attested  certificate  of  the  record  of 
the  same,  for  which  he  shall  receive  a  fee  of  one  dollar. 
Such  certificate  of  record  shall,  in  all  suits  and  prosecu- 
tions under  this  act,  be  prima  facie  proof  of  the  adoption 
of  such  label,  trademark,  or  form  of  advertisement,  and 
of  the  right  of  said  person,  association  or  union  to  adopt 
the  same.  No  label  shall  be  recorded  that  probably 
would  be  mistaken  for  a  label  already  of  record. 

Sec.  4.  Every  such  person,  association  or  union  adopt- 
ing a  label,  trademark,  or  form  of  advertisement,  as 
aforesaid,  may  proceed  by  suit  to  enjoin  the  manufac- 
ture, use,  display,  or  sale  of  any  such  counterfeits  or 
imitations  and  all  courts  having  jurisdiction  thereof  shall 
grant  injunctions  to  restrain  such  manufacture,  use,  dis- 
play or  sale,  and  such  person,  association,  or  union  shall 
be  entitled  to  such  damages  resulting  from  such  wrong- 
ful manufacture,  use,  display  or  sale,  as  may  be  deemed 
just  and  reasonable,  and  the  supreme  court  shall  also 
order  that  all  counterfeits  or  imitations  in  the  possession 
or  under  the  control  of  the  defendant  in  such  case  be 
delivered  to  an  officer  of  the  court,  or  to  the  complainant, 
to  be  destroyed. 

Sec.  5.  Every  person  who  shall  use  or  display  the 
genuine  label,  trademark,  or  form  of  advertisement  of 
any  such  joerson,  association,  or  union  in  any  manner 
not  authorized  by  such  person,  association,  or  union, 
shall  be  deemed  guilty  of  a  misdemeanor,  and  shall  be 
punished  as  provided  in  section  7  of  this  act.  In  all 
cases  where  such  association  or  union  is  not  incorpo- 
rated, suits  under  this  act  may  be  commenced  and  prose- 


STATE   TR.IDEMARK    STATUTES.  627 

cuted  by  any  officer  or  member  of  such  association  or 
union  in  behalf  of  and  for  the  use  of  such  association  or 
union. 

Sec.  6.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  person,  association, 
or  union,  or  officer  thereof,  in  and  about  the  sale  of 
goods,  or  otherwise,  not  being  authorized  to  so  use  the 
same,  shall  be  guilty  of  a  misdemeanor,  punishable  as 
provided  in  the  succeeding  section. 

Sec.  7.  Any  violations  of  any  of  the  provisions  of 
this  act  shall  be  punished  by  imprisonment  in  the  county 
jail  for  a  term  of  not  less  than  three  months  nor  more 
than  one  year,  or  by  a  fine  of  not  less  than  one  hundred 
dollars  nor  more  than  two  hundred  dollars,  or  both. 


FORM  OF  APPLICATION  FOR  REGISTRATION. 

To  the  Honorable,  the  Secretary  of  State: 

Sworn   application   accompanying  

Be  it  Known,  That  has  heretofore  adopted  and  used  a  cer- 
tain    and  herewith  files  the  same  for  record  in  the  office  of  the 

Secretary  of  State  by  leaving  two  copies,  counterparts  or  fac-similes 
thereof,  with  said  Secretary,  and  by  filing  therewith  this  sworn  appli- 
cation : 

(1)  The  name  of  the  person  so  filing  such  is  . 

(2)  The   class   of    merchandise   upon    which   the   same    has    been 

used  is  and  a  particular  description  of  the  goods  comprised  in 

such  class  is  . 


(3)  Said  has  been  used  by  applicant  since  . 

(4)  Said   and   consists   of  the  essential   feature  of 

■which  


State  of  — 
County  of 


-} 


I,  ,  being  first  duly  sworn,  depose  and  say  that  I  am  , 

the  applicant  herein,  and  make  this  affidavit  and  verification  in  

behalf.  That  I  have  read  the  above  and  foregoing  application  and 
know  the  contents  thereof,  and  that  the  facts  set  out  therein  are  true; 

that  said  so  filing  said  has  the  right  to  the  use  of  the 

same  and  that  no  other  person,  firm,  association,  union,  corporation, 
or  organization  has  the  right  to  such  use.  either  in  the  identical  form 
or  In  any  such  near  resemblance  thereto  as  may  be  calculated  to  de- 


628  APPENDIX  H. 

ceive,  and  that  the  two  copies,  counterparts  or  fac-similes,  filed  here- 
with are  true  and  correct. 


Subscribed  and  sworn  to  before  me  this day  of ,  190 — . 

Fees  I  enclosed. 

NEW  JERSEY. 

LAWS   1898.      CHAPTER  50. 

AN  ACT  to  provide  for  the  registration  of  labels,  trademarks,  terms 
and  designs,  and  protect  and  secure  the  rights,  property  and  inter- 
ests therein  of  the  persons,  associations,  organizations  and  cor- 
porations adopting  and  filing  the  same. 

Be  it  enacted  T)y  the  Senate  and  General  Assembly  of  the  State  of  New 
Jersey: 

1.  It  shall  be  lawful  for  any  person,  association,  or- 
ganization or  corporation  to  adopt  for  their  protection 
and  file  for  registry,  or  cause  to  be  filed  for  registry,  as 
herein  provided  any  label,  trademark,  term  or  design 
that  has  been  used  or  is  intended  to  be  used  for  the  pur- 
pose of  designating,  making  known  or  distinguishing 
any  goods,  wares,  merchandise  or  products  of  labor  that 
have  been  or  may  be  wholly  or  partly  made,  manufac- 
tured, produced,  prepared,  packed  or  put  on  sale  by 
any  jDerson,  association,  organization  or  corporation,  or 
to  or  uj^on  which  any  work  or  labor  has  been  applied  or 
expended  by  any  person  or  by  any  member  or  members 
of  any  association,  organization  or  corporation  that  has 
adopted  and  filed  for  registry,  or  that  may  adopt  and  file 
for  registry,  any  such  label,  trademark  term,  or  design 
as  aforesaid,  or  announcing  or  indicating  that  the  same 
have  been  made  in  whole  or  in  part  by  any  such  per- 
son, association,  organization  or  corporation  or  by  any 
member  or  members  thereof. 

2.  Whenever  any  person,  association,  organization  or 
corporation  shall  adopt  and  file  for  registry,  or  cause  to 


STATE  TRADEMARK  STATUTES.  G29 

be  adopted  and  filed  for  registrj^  any  label,  trademark, 
term,  or  design  pursuant  to  the  provisions  of  this  act, 
the  property,  privileges,  rights,  remedies  and  interests 
in  and  to  any  such  label,  trademark,  term  or  design,  and 
in  and  to  the  use  of  the  same,  provided  or  given  by  this 
act  to,  or  otherwise  conferred  upon  or  enjoyed  by,  the 
person,  association,  organization  or  corjjoration  filing 
the  same,  or  causing  the  same  to  be  filed  for  registry, 
shall  be  fully  and  completely  secured,  preserved  and 
protected  as  the  property  of  those  entitled  to  the  same, 
before  any  such  label,  trademark,  tenn  or  design  has 
been  actually  applied  to  any  goods,  wares,  merchandise 
or  product  of  labor  and  put  upon  the  market  for  sale 
or  otherwise,  and  before  any  use  or  appropriation  of 
any  such  label,  trademark,  tenn  or  design  has  been  made 
in  connection  with  any  such  goods,  wares,  merchandise 
or  product  of  labor,  as  well  as  after  the  same  has  been 
used  or  apj^lied  to  designate,  make  known  or  distinguish 
any  such  goods,  wares,  merchandise  or  product  of  labor 
and  they  have  been  put  upon  the  market. 

3.  Any  person,  association,  organization  or  corpora- 
tion that  has  heretofore  adopted  and  used,  or  shall  here- 
after adopt  and  use,  any  label,  trademark,  tenn  or  design 
as  herein  provided,  may  file  the  same  for  registry  in  the 
oflBce  of  the  secretary  of  state  by  leaving  two  copies,  fac- 
similes or  counterparts  thereof,  with  the  said  secretary, 
and  filing  therewith  a  statement  in  the  form  of  an  affida- 
vit, subscribed  and  sworn  to  by  any  such  person,  or  by 
any  officer,  agent  or  attorney  of  any  such  association, 
organization  or  coi-poration,  specifying  the  person,  asso- 
ciation, organization  or  corporation  by  whom,  or  on 
whose  behalf,  any  such  label,  trademark,  term  or 
design  is  filed,  and  the  class  or  character  of  the 
goods,  wares,  merchandise  or  product  of  labor  to 
which  the  same  has  been,  or  is  intended  to  be,  appro-; 
priated  or  applied,  and  that  the  person,  association, 
organization  or  corporation  so  filing  the  same,  or  on 


630  APPENDIX  H. 

whose  behalf  the  same  is  so  filed,  has  the  right  to 
the  use  of  said  label,  trademark,  term  or  design, 
and  that  no  other  person,  firm,  association,  or- 
ganization or  corporation  has  the  right  to  such  use, 
either  in  the  identical  form  or  in  any  such  near  resem- 
blance thereto  as  may  be  calculated  to  deceive,  without 
the  permission  or  authority  of  the  person,  association, 
organization  or  corporation  filing  the  same,  or  causing 
the  same  to  be  filed,  and  that  the  copies,  fac-similes  or 
counterparts  filed  therewith  are  true  and  correct  copies, 
fac-similes  or  counterparts  of  the  genuine  label,  trade- 
mark, term  or  design  of  the  person,  association,  organi- 
zation or  corporation  filing  the  same  or  causing  the 
same  to  be  filed;  and  there  shall  be  paid  for  such  filing 
and  registiy  a  fee  of  one  dollar  to  the  secretary  of  state 
for  the  use  of  the  state. 

4.  The  secretaiy  of  state,  upon  the  filing  of  any  such 
label,  trademark,  term,  or  design  that  is  not  in  conflict 
with  the  next  section  hereof,  shall  register  the  same,  and 
shall  deliver  to  the  person,  association,  organization  or 
corporation  filing  the  same,  or  causing  the  same  to  be 
filed,  as  many  certified  copies  thereof,  with  his  certifi- 
cate of  such  registry,  as  any  such  person,  association, 
organization  or  corporation  may  request,  and  for  every 
such  copy  and  certificate  there  shall  be  paid  to  the  sec- 
retary of  state,  for  the  use  of  the  state,  a  fee  of  one  dol- 
lar; and  any  such  certified  copy  and  certificate  shall  be 
admissible  in  evidence  and  competent  and  sufficient 
proof  of  the  adoption,  filing  and  registry  of  any  such 
label,  trademark,  term  or  design  by  any  such  person, 
association,  organization  or  corporation,  in  any  action 
or  judicial  proceeding  in  any  of  the  courts  of  this  state, 
and  of  due  compliance  with  the  provisions  of  this  act; 
Provided,  however,  that  such  certificate  shall  not  be  as- 
signable or  transferable  by  the  person,  association,  or- 
ganization or  corporation  to  whom  the  same  is  issued  by 
the  secretary  of  state. 


STATE  TRADEMARK  STATUTES.  631 

5.  It  shall  not  be  lawful  for  the  secretary  of  state  to 
register,  or  permit  to  be  registered,  for  any  person,  as- 
sociation, organization  or  corporation  any  label,  trade- 
mark, tenn  or  design  that  is  in  the  identical  form  of 
any  other  label,  trademark,  term  or  design  theretofore 
filed  by  or  on  behalf  of  any  other  person,  association, 
organization  or  corporation,  or  that  bears  any  such 
near  resemblance  thereto  as  may  be  calculated  to  deceive, 
or  that  would  be  liable  to  be  mistaken  therefor;  and  any 
person,  association,  organization  or  corporation  who 
shall  file  or  procure  the  filing  and  registry  of  any  label, 
trademark,  term  or  design  in  the  office  of  the  secretary 
of  state,  under  the  provisions  of  this  act,  by  making  any 
false  or  fraudulent  representations  or  declarations,  with 
fraudulent  intent,  shall  be  liable  to  pay  any  damages 
sustained  in  consequence  of  any  such  registry,  to  be 
recovered  by  or  on  behalf  of  the  party  injured  thereby 
in  any  court  of  law  of  this  state  having  jurisdiction  in 
civil  causes. 

6.  Whenever  any  person,  association,  organization  or 
corporation  has  heretofore  adopted  and  filed  for  record 
or  registry,  or  shall  hereafter  adopt  and  file  for  registry, 
any  label,  trademark,  term  or  design,  or  cause  the  same 
to  be  done,  as  herein  provided,  and  the  same  shall  have 
been  registered  pursuant  to  this  act,  it  shall  be  unlawful, 
and  a  violation  of  this  act,  for  any  other  person,  associa- 
tion, organization  or  corporation  to  manufacture,  use. 
sell,  offer  for  sale,  or  in  any  way  utter  or  circulate,  any 
counterfeit  or  imitation  of  any  such  label,  trademark, 
term  or  design;  or  have  in  possession,  with  intent  that 
the  same  shall  be  sold  or  disposed  of,  any  goods,  wares, 
merchandise  or  product  of  labor  to  which  or  on  which 
any  counterfeit  or  imitation  of  any  such  label,  trade- 
mark, term  or  design  is  attached,  affixed,  printed, 
painted,  stamped,  impressed  or  displayed;  or  to  sell  or 
dispose  of,  or  offer  to  sell  or  dispose  of,  or  have  in  pos- 
session with  intent  that  the  same  shall  be  sold  or  dis- 


632  APPENDIX  H. 

posed  of,  any  goods,  wares,  merchandise  or  product  of 
labor  contained  in  any  box,  case,  can  or  package  to 
which  or  on  which  any  such  counterfeit  or  imitation  is 
attached,  affixed,  printed,  painted,  stamped,  impressed 
or  displayed. 

7.  AN'henever  any  person,  association,  organization  or 
corporation  has  heretofore  adoj^ted  and  filed  for  record 
or  registry',  or  shall  hereafter  adopt  and  file  for  registry, 
any  label,  trademark,  teim  or  design  as  herein  provided, 
it  shall  be  unlawful,  and  a  violation  of  this  act,  for  any 
other  jDcrson  or  persons,  association,  organization  or 
corporation,  to  make  any  use,  sale,  offer  for  sale  or 
display  of  the  genuine  label,  trademark,  term  or  design 
of  any  such  person,  association,  organization  or  corpora- 
tion, filing  the  same;  or  to  have  any  such  genuine  label, 
trademark,  term  or  design  in  possession  with  intent 
that  the  same  shall  be  used,  sold,  offered  for  sale  or 
displayed,  or  that  the  same  shall  be  applied,  attached 
or  displayed  in  any  manner  whatever  to  or  on  any 
goods,  wares  or  merchandise;  or  to  sell,  offer  to  sell,  or 
dispose  of  or  have  in  possession  with  intent  that  the 
same  shall  be  sold  or  disposed  of,  any  goods,  wares  or 
merchandise  in  any  box,  case,  can  or  package  to  or  on 
which  any  such  genuine  label,  trademark,  term  or  design 
of  any  such  person,  association,  organization  or  corpora- 
tion is  attached,  affixed  or  displayed;  or  to  make  any 
use  whatever  of  any  such  genuine  label,  trademark,  term 
or  design,  without  first  obtaining  in  every  such  case,  the 
license,  consent  or  authority  of  the  person,  associa- 
tion, organization  or  corporation  adopting,  filing  and 
registering  the  same,  or  causing  the  same  to  be  adopted, 
filed  and  registered ;  and  any  such  license,  consent  or  au- 
thority may  be  revoked  and  terminated  at  any  time 
upon  notice,  and  thereafter  any  use  thereof  shall  be  a 
violation  of  this  act,  and  subject  those  violating  the 
same  to  all  the  liabilities  and  penalties  herein  provided 
against   any   violation   thereof. 


STATE   TRADEMxVRK   STATUTES.  633 

8.  It  shall  be  lawful  for  any  person,  association,  or- 
ganization or  coiporation  that  has  adopted  and  filed, 
or  caused  to  be  filed  and  recorded  or  registered  in  the 
ofifice  of  the  secretary  of  state,  at  any  time  before  the 
passage  of  this  act,  any  label,  trademark,  term  or  de- 
sign, to  refile  the  same  for  registration  by  the  secretary 
of  state  pursuant  to  the  provisions  of  this  act,  uiK)n  pay- 
ment of  the  fees  herein  provided  for  filing  and  register- 
ing any  label,  trademark,  term  or  design,  and  for  copies 
and  certificates  thereof,  and  any  person,  association,  or- 
ganization or  corporation  so  refiling  any  such  label, 
trademark,  tenn  or  design  shall  have  and  be  entitled 
to  all  the  rights,  remedies,  privileges  and  protection 
given  by  this  act  to  any  person,  association,  organiza- 
tion or  corporation  originally  filing  any  label,  trademark, 
term  or  design  under  the  provisions  of  this  act  and  sub- 
ject to  the  same  liabilities. 

9.  The  court  of  chancery  shall  have  jurisdiction  in  all 
cases  arising  or  commenced  therein  under  this  act  for 
the  violation  of  any  of  the  provisions  thereof;  and  any 
person,  association,  organization  or  corporation  filing, 
or  causing  to  be  filed,  for  registry,  any  label,  trademark, 
term  or  design  pursuant  to  the  provisions  of  this  act, 
shall  have  the  right  to  an  action  in  the  said  court  against 
any  person  or  persons,  association,  organization  or  cor- 
porations, for  the  violation  of  any  of  the  provisions  of 
this  act;  and  upon  the  filing  of  any  bill  of  complaint 
therefor,  the  law  and  practice  regulating  proceedings  in 
that  court  shall  be  applicable  thereto ;  and  the  said  court 
is  hereby  empowered  and  required  to  enjoin  the  manu- 
facture, counterfeiting,  imitation,  dispay,  use,  sale,  offer 
of  sale,  circulating  or  uttering  of  any  counterfent  or  imi- 
tation of  any  such  label,  trademark,  term  or  design  of 
any  such  person,  association,  organization  or  corpora- 
tion; and  the  sale  or  disposal  of  any  goods,  wares,  mer- 
chandise or  product  of  labor  to  which,  or  on  which,  any 
such  counterfeit  or  imitation  label,  trademark,  term  or 


634  APPENDIX  H. 

design  is  attached,  afiflxed,  printed,  painted,  stamped, 
impressed  or  displayed;  or  any  goods,  wares,  merchan- 
dise or  product  of  labor  contained  in  any  box,  case,  can 
or  package  to  or  on  which  any  such  counterfeit  or  imi- 
tation is  attached,  affixed,  printed,  painted,  stamped,  im- 
pressed or  displayed;  and  further  to  enjoin  the  manu- 
facture, use,  sale,  offer  of  sale,  or  display,  of  any  gen- 
uine label,  trademark,  term  or  design  of  any  such  per- 
son, association,  organization  or  corporation  filing  the 
same  as  aforesaid;  or  having  in  possession  any  such 
genuine  label,  trademark,  term  or  design  with  intent 
that  the  same  shall  be  used,  sold,  offered  for  sale  or  dis- 
played, or  the  same  applied,  attached  or  displayed  in 
any  manner  whatever  to  or  on  any  goods,  wares,  mer- 
chandise or  product  of  labor;  or  the  selling  or  offer  to 
sell  or  dispose  of,  or  having  in  possession  with  intent 
that  the  same  shall  be  sold,  offered  for  sale  or  disposed 
of,  any  goods,  wares  or  merchandise  in  any  box,  case, 
can  or  package  to  or  on  which  any  such  genuine  label, 
trademark,  term  or  design  of  any  such  person,  associa- 
tion, organization  or  corporation  is  attached,  affixed  or 
displayed;  and  from  making  any  other,  or  any,  use 
whatever  of  any  such  genuine  label,  trademark,  term  or 
design,  without  having  first  obtained,  in  any  and  every 
such  case,  the  consent  and  authority  of  the  person,  as- 
sociation, organization  or  corporation  adopting,  filing 
and  registering  the  same,  or  causing  the  same  to  be  filed 
and  registered,  as  herein  provided;  and  the  said  court 
of  chancery  is  hereby  empowered  to  make  such  other 
orders  and  direct  such  other  proceedings  as  the  court 
may  deem  necessary  and  proper  for  the  due  protection 
of  the  rights  of  complainants,  effecting  the  purposes  of 
this  act,  the  prevention  of  any  violation  of  any  of  the 
provisions  of  the  same ;  and  secure  and  protect  any  and 
all  persons,  associations,  organizations  or  corporations 
in  all  the  rights,  privileges,  property  and  interests  to 
which  they  or  any  of  them  are  or  may  be  entitled  in 


STATE  TRADEMARK  STATUTES.  635 

any  such  label,  trademark,  term  or  desigu  under  any  of 
the  provisions  of  tliis  act  or  otherwise;  and  it  shall  be 
the  duty  of  tlie  said  court  of  chancery  to  award  to  the 
complainant  or  complainants  in  any  such  action  any  and 
all  damages  resulting  from  any  such  wrongful  use  of  any 
such  label,  trademark,  term  or  design  by  any  defendant 
or  defendants,  or  for  any  violation  of  any  of  the  pro- 
visions of  this  act;  and  to  require  any  such  defendant 
or  defendants  to  pay  to  such  complainants  any  and  all 
such  damages,  together  with  all  costs  and  expenses  in- 
curred by  any  such  complainant  in  any  such  action  or 
proceeding;  and  the  said  court  shall  also  order  and  de- 
cree that  the  defendants  pay  to  the  complainant  or  com- 
plainants any  and  all  projfits  obtained,  received  or  de- 
rived from  any  such  wrongful  use  or  any  violation  of 
the  provisions  of  this  act;  or  both  profits  and  any  such 
damages,  and  that  any  and  all  such  counterfeits  or  imi- 
tations of  any  such  labels,  trademarks,  terms  or  designs 
in  the  possession  or  under  the  control  of  the  defendant 
or  defendants  in  any  such  action  shall  be  delivered  up  to 
an  officer  of  the  court,  or  to  the  complainant,  to  be  de- 
stroyed, and  that  any  such  genuine  labels,  trademarks, 
terms  or  designs  in  the  possession  or  under  the  control 
of  any  such  defendant  or  defendants  shall  be  delivered 
up  to  the  complainant. 

10.  That,  in  addition  to  any  other  rights,  remedies  or 
penalties  provided  by  this  act,  and  as  concurrent  there- 
with, any  person  or  persons,  association,  organization 
or  corporation  that  shall  violate  any  of  the  provisions 
of  this  act  shall  be  liable  to  a  penalty  of  not  less  than 
two  hundred  and  not  more  than  five  hundred  dollars, 
to  be  recovered  in  an  action  of  debt  in  any  court  of  law 
of  this  state  having  jurisdiction  in  civil  causes,  by  any 
such  person,  association,  organization  or  corporation 
that  has  adopted  and  filed,  or  caused  the  same  to  be  done 
as  aforesaid,  any  such  label,  trademark,  term  or  design; 
which  action  may  be  commenced  by  summons  as  in  ordi- 


636  APPENDIX  H. 

nary  cases,  and  shall  be  proceeded  with  therein  as  or- 
dinary cases  in  said  court;  and  in  case  any  execution 
shall  be  issued  upon  any  judgment  obtained  against  the 
defendant  or  defendants  in  any  such  action  and  the 
same  be  returned  unsatisfied,  the  court,  on  application 
and  two  days'  notice  to  the  defendant,  may  award  an 
execution  to  take  the  body  of  the  defendant  or  defend-t 
ants  as  in  other  cases  where  a  capias  may  issue  out  of 
the  circuit  or  supreme  courts  of  this  state;  and  there- 
after the  rights,  remedies  and  liabilities  of  the  parties, 
and  the  proceedings  in  the  case  shall  be  the  same,  or  as 
nearly  as  may  be,  as  in  other  actions  in  said  courts 
where  an  execution  to  take  the  body  of  the  defendant  or 
defendants  has  been  issued;  and  it  shall  be  the  duty  of 
the  court  in  which  any  such  action  may  be  brought  to 
make  all  proper  and  necessary  orders  to  restrain  and 
prevent  any  defendant  or  defendants  from  continuing 
the  committing  of  any  violation  of  any  of  the  provisions 
of  this  act. 

11.  In  any  suit  or  proceeding  in  equity,  or  in  any 
action  at  law,  brought  by  or  on  behalf  of  any  such  asso- 
ciation or  organization  that  is  not  incorporated,  for 
any  violation  of  any  of  the  provisions  of  this  act,  the 
same  may  be  brought  in  the  recognized  name  of  any 
such  association  or  organization,  or  in  the  proper  name 
of  the  president  or  the  secretary  or  the  treasurer  of  any 
such  association  or  organization  who  has  been  or  may 
be  given  authority  to  bring  any  action  or  actions  for 
or  in  behalf  of  any  such  association  or  organization, 
and  if  for  any  reason  such  authority  is  not  given  be- 
fore the  commencement  of  any  such  suit  or  action,  the 
same  may  be  given  thereafter  at  any  time  before  the 
trial  of  the  same;  and  any  such  suit  in  equity  or  action 
at  law  may  be  brought  as  aforesaid  in  the  recognized 
name  of  any  branch  or  local  or  sub-association,  affiliated 
or  connected  with  any  national  or  international  asso- 
ciation or  organization,  or  in  the  name  of  the  president, 


STATE  TRADEMARK  STATUTES.  637 

or  the  secretaiy,  or  the  treasurer  thereof;  and  such 
authority  to  bring  the  same  may  be  given  by  any  board 
of  directors,  executive  board,  or  executive  committee, 
of  any  such  association  or  organization,  elected,  chosen, 
or  appointed  by  any  such  association  or  organization ; 
and  any  such  person  or  persons  bringing  any  such 
action  or  proceeding  in  any  court  of  law  or  equity  in 
this  state  shall  have  the  right  to  receive  any  and  all 
moneys,  property  or  other  valuable  thing  recovered  by 
or  adjudged  to  the  complainant  or  plaintiff  in  any  such 
suit  or  action,  for  the  use  and  benefit  of  the  association 
or  organization  entitled  to  the  same;  and  whenever  any 
such  suit  or  action  shall  be  brought  by  or  on  behalf  of 
any  such  branch  or  local  or  sub-association  or  organiza- 
tion as  herein  provided  instead  of  by  or  on  behalf  of| 
any  such  national  or  international  association  or  organi- 
zation, such  branch  or  local  or  sub-association  bring- 
ing the  same  shall  be  entitled  to  the  same  rights,  privi- 
leges, remedies  and  advantages,  in  the  i^rosecution  of 
such  suit  or  action,  as  any  other  party  or  parties  author- 
ized by  this  act  to  bring  such  suit  or  action  would  have 
been  entitled  to  if  any  such  suit  or  action  had  been 
brought  by  them,  or  in  their  behalf,  as  herein  provided. 

12.  This  act  shall  be  construed  by  all  courts  at  all 
times,  in  all  suits,  actions  and  proceedings,  in  the  most 
liberal  manner  for  effecting  the  objects  and  purposes 
thereof  and  protecting  the  claims,  rights,  interests,  use 
and  property  of  every  person,  association,  organization 
or  corporation  in  and  to  any  label,  trademark,  tenn  or 
design,  filed  and  registered  pursuant  to  the  provisions 
of  this  act. 

13.  All  acts  and  parts  of  acts  contrary  to,  or  incon- 
sistent with  the  provisions  of  this  act,  be  and  the  same 
are  hereby  repealed. 

14.  This  act  shall  be  deemed  and  taken  to  be  a  public 
act,  and  shall  take  effect  immediately. 

Passed  ]\Iarch  15th,  1898. 


63S  APPENDIX  H. 

In  an  action  to  recover  penalties  under  §  6  of  this  act 
it  is  not  necessary  to  show  guilty  knowledge  by  the  de- 
fendant. Cigar  Makers'  International  Union  of  America 
V.  Goldberg,  57  Atl.  Kep.  141. 

The  act  is  constitutional.     Ihid. 

§  10  of  this  Act  imposing  a  penalty  of  not  less  than 
two  hundred  dollars,  and  not  more  than  five  hundred 
dollars,  permits  the  plaintiff  in  an  action  for  its  recovery 
to  elect  and  fix  the  amount  for  which  the  suit  shall  be 
brought  within  these  limits. 

State  V.  Schmidt,  48  Atl.  Rep.  588. 

The  Acts  passed  in  1889,  1892  and  1895,  for  the  pro- 
tection of  the  labels,  trademarks  and  forms  of  advertis- 
ing of  associations  or  unions  of  workingmen,  were  held 
not  to  be  unconstitutional,  and  not  in  violation  of  Article 
4,  §  7,  paragraph  11  of  the  Constitution  of  New  Jersey, 
forbidding  the  passage  of  private,  local  or  special  laws, 
granting  to  any  association,  corporation,  or  individual, 
any  special  privilege,  immunity,  or  franchise  whatever. 

Schmalz  v.  Wooley,  57  N.  J.  Eq.  303,  41  Atl.  Rep.  939. 

An  Act  of  February  21,  1854,  supplemented  March 
25,  1863,  relating  to  the  protection  of  packages  of  manu- 
facturers of  mineral  waters,  and  other  beverages,  and 
prescribing  a  penalty  for  the  unauthorized  use  thereof, 
did  not  apply  to  junk  dealers  who  had  registered  bot- 
tles on  their  premises. 

Boivden  v.  Randolph  Tp.,  41  N.  J.  Law,  462. 

In  the  Act  of  March  11,  1891,  for  the  protection  of 
manufacturers  and  bottlers  of  mineral  waters  and  the 
like,  several  offenses  are  specified.  It  has  been  held, 
that  in  a  complaint  under  this  Act,  no  statement  of  de- 
mand is  required;  and  that  a  complaint  is  defective 
which  charges,  in  the  alternative,  the  commission  of 
one  or  another  of  several  of  the  specified  offenses. 

Brant  v.  Froelich,  49  N.  J.  Law,  336,  8  Atl.  Rep.  283. 


STATE  TRADEMARK  STATUTES.  639 


NEW  MEXICO. 

AN   ACT   providing   for   tlie   registration   of   tradenames,   trademarks, 

and  labels. 

Be  it  enacted  by  the  Legislative  Assembly  of  the  Territory  of  New 
Mexico: 

Section  1.  Any  person  or  persons,  firm,  corporation 
or  association  who  manufacture  or  deal  in  articles  of  a 
commercial  nature  and  wish  to  retain  the  exclusive  right 
to  the  use  of  a  tradename,  trademark  or  label  shall 
make  a  description  of  the  same  in  writing,  accompanied 
by  a  facsimile  of  such  tradename,  trademark  or  label, 
which  description  and  application  must  set  forth  the 
class  or  classes  of  merchandise  to  be  covered  by  such 
tradename,  trademark  or  label,  together  with  a  state- 
ment that  the  applicant  claims  by  priority  of  adoption 
and  employment  of  the  same  exclusive  right  to  the  use 
thereof.  Such  instrument  shall  be  signed  by  at  least  one 
of  the  persons  or  by  the  officials  of  the  Company  making 
application  for  registration,  the  whole  duly  acknowl- 
edged, and  filed  in  the  office  of  the  Secretary  of  the  Ter- 
ritory. For  the  filing  of  each  application  and  issuing 
certificate  thereof,  the  Secretary  shall  collect  a  fee  of 
$5.00.  The  Secretary  shall  keep  a  record  of  each  trade- 
name, trademark  or  label,  and  it  shall  be  unlawful  for 
any  other  person,  firm,  corporation  or  association  to 
adopt  a  tradename,  trademark  or  label  identical  with  or 
similar  to  one  previously  registered.  A  copy  of  such 
description  of  any  tradename,  trademark  or  label,  cer- 
tified under  the  Great  Seal  of  the  Territory  of  New 
Mexico,  shall  be  prima  facie  evidence  of  the  facts  there- 
in stated. 

Sec.  2.  The  proprietor  of  each  tradename,  trademark 
or  label  shall  cause  the  same  to  be  plainly  marked, 
printed,  stamped  or  branded  upon  each  article  or  origi- 
nal package  covered  by  the  same. 


640  APPENDIX  H. 

Sec.  3.  It  shall  be  unlawful  for  any  person  or  per- 
sons, firm,  corporation  or  association  to  use  or  refill 
any  barrel,  sack,  package  or  bottle  bearing  any  regis- 
tered tradename,  trademark,  or  label  with  any  article 
for  purposes  of  deceit. 

Sec.  4.  It  shall  be  unlawful  for  any  person  or  persons, 
firm,  corporation  or  association  to  make,  forge  or  coun- 
terfeit any  tradename,  trademark  or  label  previously 
registered  in  accordance  with  this  act;  have  in  his  or 
their  possession,  except  with  written  permission  of  the 
owner  thereof,  any  die,  stamp,  stencil  or  model  of  such 
tradename,  trademark  or  label;  vend  or  keep  for  sale 
any  drugs,  goods,  wares  or  merchandise  intended  to 
represent  the  drugs,  goods,  wares  or  merchandise  cov- 
ered by  such  tradename,  trademark  or  label,  or  affix  any 
general  design  identical  with  or  similar  to  such  trade- 
name, trademark  or  label  when  not  the  first  to  employ  or 
use  the  same. 

Sec.  5.  Any  person  or  persons,  firm,  corporation  or 
association  violating  the  provisions  of  sections  3  or  4 
of  this  act  shall  be  deemed  guilty  of  misdemeanor  an^ 
shall  be  subject  to  a  fine  in  a  sum  not  less  than  $50.00 
nor  more  than  $200.00  for  each  offense,  at  the  discretion 
of  the  court,  together  with  damages  as  they  may  appear. 

Sec.  6.  The  provisions  of  this  act,  in  so  far  as  they 
may  be  applicable,  are  hereby  extended  to  any  person 
or  persons,  firm,  corporation  or  association,  who  may 
have  registered  a  tradename,  trademark  or  label  in  good 
faith  prior  to  the  passage  of  this  act,  and  this  act  shall 
be  in  force  and  effect  from  and  after  its  passage. 

Chap.  24,  Laws  1905.    Approved  March  2,  1905. 


STATE   TRADEMARK    STATUTES.  641 


NEW  YORK. 


Chap.  376,  Laws  of  1896,  contains  the  following  sec- 
tion: 

§  28.  Trademarks.  Any  person  engaged  in  manu- 
facturing, bottling,  or  selling  any  beverage,  medicine,- 
perfumery  or  mixture  in  this  state,  put  up  by  him  for 
sale  in  any  vessel  or  receptacle,  with  his  name  or  other 
private  mark  branded,  stamped  or  marked  thereupon, 
may  file  in  the  office  of  the  secretary  of  state  and  in  the 
office  of  the  county  clerk  of  the  county  where  the  same 
is  manufactured,  bottled,  or  put  up  for  selling,  a  de- 
scription of  the  name  or  other  private  mark  so  branded, 
stamped,  or  marked  thereupon,  and  publish  the  same 
once  a  week,  for  at  least  three  weeks  successively,  in  a 
newspaper  published  in  said  county,  except  in  New 
York  and  Kings,  where  such  publication  shall  be  for  the 
same  length  of  time  daily  in  two  newspapers  therein, 
and  he  shall  thereupon  be  deemed  the  proprietor  of  such 
name  or  mark  and  of  every  vessel  or  receptacle  upon 
which  it  may  be  branded,  stamped  or  placed.  No  per- 
son, other  than  such  proprietor,  shall  fill  for  any  i)ur- 
pose,  any  such  vessel  or  receptacle  so  branded,  stamped 
or  marked  or  from  which  any  such  brand,  stamp,  mark, 
name  or  device  has  been  removed,  defaced  or  obliterated, 
nor  remove,  deface  or  obliterate  the  same,  or  place  other 
brands,  stamps,  marks,  names  or  devices  upon  any  such 
vessel  or  receptacle  without  the  written  peraiission  of 
such  proprietor,  or  unless  there  has  been  a  sale  to  such 
person  of  such  vessel  or  receptacle,  exclusive  of  the  con- 
tents thereof,  by  such  proprietor. 

No  person  other  than  such  proprietor,  shall,  without 
his  permission,  use,  traffic  in,  purchase,  sell,  dispose  of, 
convert,  mutilate,  destroy  or  wilfully  or  unreasonably 
refuse  to  return   or  deliver  to  such  proprietor  on  de- 

41 


642  APPENDIX  H. 

maud,  any  such  vessel  or  receptacle  so  branded,  stamped 
or  marked  belonging  to  such  proprietor. 

Any  person  violating  any  provision  of  this  section 
shall  forfeit  to  such  proprietor  one  hundred  dollars  for 
each  such  violation. 

Possession  of  any  such  vessel  or  receptacle  without 
the  consent  of  the  proprietor  of  the  trademark  thereupon 
shall  be  presumptive  evidence  of  such  violation. 

§  29  of  this  Act  imposes  a  penalty  for  using  milk  cans 
without  the  consent  of  the  owner,  when  such  cans  are 
marked  with  the  initials  of  the  owner  and  makes  posses- 
sion of  any  such  cans  presumptive  evidence  of  unlawful 
usage.  In  sustaining  a  judgment  for  the  penalty  im- 
posed by  the  Act,  the  possession  and  use  of  the  can  by 
the  defendant  was  held  to  be  continuous  violation  of 
the  statute,  and  that  the  cause  of  action  was  not  barred, 
by  sub-division  3,  §  383,  Code  of  Civil  Procedure. 

Bell  V.  Gibson,  75  N.  Y.  Supp.  753. 

The  Act  of  May  27,  1896  (Chap.  933,  Laws  of  1896) 
is  as  follows: 

§  1.  Any  and  all  persons  and  corporations  engaged 
in  manufacturing,  bottling  or  selling  soda  waters,  min- 
eral or  aerated  waters,  porter,  ale,  beer,  cider,  ginger 
ale,  milk,  cream,  small  beer,  lager  beer,  weiss  beer,  white 
beer,  or  other  beverages  or  medicines,  medical  prepara- 
tions, perfumery,  oils,  compounds  or  mixtures,  in  bottles, 
siphons,  tins  or  kegs,  with  his,  her,  its  or  their  name  or 
names,  or  other  marks  or  devices  branded,  stamped,  en- 
graved, etched,  blown,  impressed,  or  otherwise  produced 
upon  such  bottles,  siphons,  tins  or  kegs,  or  the  boxes 
used  by  him,  her,  it  or  them,  may  file  in  the  office  of  the 
clerk  of  the  county  in  which  his,  her,  its  or  their  prin- 
cipal place  of  business  is  situated,  or  if  such  person, 
persons,  corporation  or  corporations  shall  manufacture 
or  bottle  out  of  this  state,  then  in  any  county  in  this 
state,  and  also  in  the  office  of  the  secretary  of  state,  a 
description  of  the  name  or  names,  marks  or  devices  so 


STATE  TRADEMARK  STATUTES.  643 

used  by  him,  her,  it  or  them,  respectively,  and  cause 
such  descrii^tion  to  be  printed  once  in  each  week,  for 
three  weeks  successively,  in  a  newspaper  published  in 
the  county  in  which  said  notice  may  have  been  filed  as 
aforesaid,  except  that  in  the  city  and  county  of  New 
York  and  the  city  of  Brooklyn,  in  the  county  of  Kings, 
such  publication  shall  be  made  twice  in  each  week,  for 
three  weeks  successively,  in  two  daily  newspapers  pub- 
lished in  the  cities  of  New  York  and  Brooklyn,  re- 
spectively. 

§  2.  It  is  hereby  declared  to  be  unlawful  for  any  per- 
son or  persons,  corporation  or  corporations  to  fill  with 
soda  water,  mineral  or  aerated  waters,  porter,  ale,  cider, 
ginger  ale,  milk,  cream,  beer,  small  beer,  lager  beer, 
weiss  beer,  white  beer  or  other  beverages,  or  with  medi- 
cine, medical  j^reparations,  perfumery,  oils,  compounds 
or  mixtures,  any  bottle,  box,  siphon,  tin  or  keg  so 
marked  or  distinguished  as  aforesaid,  with  or  by  any, 
name,  mark  or  device,  of  which  a  description  shall  have 
been  filed  and  published,  as  j^rovided  in  section  one  of 
this  act,  or  to  deface,  erase,  obliterate,  cover  up  or 
otherwise  remove  or  conceal  any  such  name,  mark  or  de- 
vice thereon,  or  to  sell,  buy,  give,  take  or  otherwise  dis- 
pose of  or  traffic  in  the  same  without  the  written  con- 
sent of,  or  unless  the  same  shall  have  been  purchased 
from  the  person  or  persons,  corporation  or  corporations, 
whose  mark  or  device  shall  be  or  shall  have  been  in  or 
upon  the  bottle,  box,  siphon,  tin  or  keg  so  filled,  traf- 
ficked in,  used  or  handled  as  aforesaid.  Any  person  or 
persons,  or  corporation  or  corporations  offending 
against  the  provisions  of  this  section  shall  be  deemed 
guilty  of  a  misdemeanor,  and  shall  be  punished  for  the 
first  offense  by  imprisonment  for  not  less  than  ten  days 
nor  more  than  one  year,  or  by  a  fine  of  fifty  cents  for 
each  and  every  such  bottle,  box,  siphon,  tin  or  keg  so 
filled,  sold,  used,  disposed  of,  bought  or  trafficked  in, 
or  by  both  such  fine  and  imprisonment,  and  for-  each 


644  ^\PPENDIX  H. 

subsequent  offense  by  imprisonment  for  not  less  than 
twenty  days  nor  more  than  one  year,  or  by  a  fine  of  not 
less  than  one  dollar,  nor  more  than  five  dollars,  for 
each  and  every  bottle,  box,  siphon,  tin  or  keg  so  filled, 
sold,  used,  disposed  of,  bought  or  trafficked  in,  or  by 
both  such  fine  and  imprisonment,  in  the  discretion  of  the 
magistrate  before  whom  the  offense  shall  be  tried. 

§  3.  The  use  by  any  person,  other  than  the  person  or 
persons,  corporation  or  corporations,  whose  device, 
name  or  mark  shall  be  or  shall  have  been  upon  the  same 
without  such  written  consent  or  purchase  as  aforesaid, 
of  any  such  marked  or  distinguished  bottle,  box,  siphon, 
tin  or  keg,  a  description  of  the  name,  mark  or  device, 
whereon  shall  have  been  filed  and  published,  as  herein 
provided,  for  the  sale  therein  of  soda  waters,  mineral 
or  aerated  waters,  porter,  ale,  cider,  ginger  ale,  milk, 
cream,  beer,  small  beer,  lager  beer,  weiss  beer,  white 
beer  or  other  beverages,  or  any  article  of  merchandise, 
medicines,  medicinal  preparations,  perfumery,  oils,  com- 
pounds, mixtures  or  preparations,  or  for  the  furnishing 
of  such  or  similar  beverages  to  customers,  or  the  buy- 
ing, selling,  using,  disposing  of  or  trafficking  in  any 
such  bottles,  boxes,  siphons,  tins  or  kegs  by  any  person 
other  than  said  persons  or  corporations  having  a  name, 
mark  or  device  thereon  of  such  owner  without  such  writ- 
ten consent,  or  the  having  by  any  junk  dealer  or  dealers 
in  second-hand  articles,  possession  of  any  such  bottles, 
boxes,  siphons,  tins  or  kegs,  a  description  of  the  marks, 
names  or  devices,  whereon  shall  have  been  so  filed  and 
published  as  aforesaid,  without  such  written  consent, 
shall  and  is  hereby  declared  to  be  presumptive  evidence 
of  the  said  unlawful  use,  purchase  and  traffic  in  of  such 
bottles,  boxes,  siphons,  tins  or  kegs. 

§  4.  Whenever  any  person,  persons  or  corporation 
mentioned  in  section  one  of  this  act,  or  his,  her,  its  or 
their  agent  shall  make  oath  before  any  magistrate  that 
he,  she  or  it  has  reason  to  believe,  and  does  believe, 


STATE  TRADEMARK  STATUTES.  645 

that  any  of  his,  her,  its  or  their  bottles,  boxes,  siphons, 
tins  or  kegs,  a  description  of  the  names,  marks  or  de- 
vices whereon  has  been  so  filed  and  published  as  afore- 
said, are  being  unlawfully  used  or  filled,  or  had,  by  any 
j^erson  or  corporation  manufacturing  or  selling  soda, 
mineral  or  aerated  waters,  jjorter,  ale,  cider,  ginger  ale, 
milk,  cream,  small  beer,  lager  beer,  weiss  beer,  white 
beer  or  other  beverages  or  medicine,  medical  prepara- 
tions, perfumery,  oils,  compounds  or  mixtures,  or  that 
any  junk  dealer  or  dealer  in  second-hand  articles,  ven- 
der of  bottles,  or  any  other  person  or  corporation  has 
any  such  bottles,  boxes,  siphons,  tins  or  kegs  in  his, 
her  or  its  possession,  or  secreted  in  any  place,  the  said 
magistrate  must  thereupon  issue  a  search  warrant  to 
discover  and  obtain  the  same,  and  may  also  cause  to 
be  brought  before  him  the  person  in  whose  possession 
such  bottles,  boxes,  siphons,  tins  or  kegs  may  be  found, 
and  shall  then  inquire  into  the  circumstances  of  such 
possession,  and  if  such  magistrate  finds  that  such  person 
has  been  guilty  of  a  violation  of  section  two  of  this  act, 
he  must  impose  the  punishment  herein  prescribed,  and 
he  shall  also  award  jjossession  of  the  proi:)erty  taken 
upon  such  warrant  to  the  owner  thereof. 

§  5.  The  requiring,  taking  or  accepting  of  any  de- 
posit, for  any  purpose,  upon  any  bottle,  box,  sij^hon,  tin 
or  keg  shall  not  be  deemed  or  constitute  a  sale  of  such 
I^roperty,  either  optional  or  otherwise,  in  any  proceed- 
ing under  this  act. 

§  6.  Any  person  or  persons,  corporation  or  corpora- 
tions, that  has  or  have  heretofore  filed  in  the  offices  men- 
tioned in  section  one  of  this  act  a  description  of  the 
name  or  names,  mark  or  devices  upon  his,  her,  their  or 
its  property,  therein  mentioned,  and  has  caused  the  same 
to  be  published  according  to  the  law  existing  at  the  time 
of  such  filing  and  publication  shall  not  be  required  to 
again  file  and  publish  such  description  to  be  entitled  to 
the  benefits  of  this  act. 


646  APPENDIX  H. 

The  Act  of  May  3,  1904,  is  as  follows: 
Section  1.  Any  and  all  persons  and  corporations  en- 
gaged in  manufacturing,  freezing,  preserving  or  selling 
ice  cream,  confectioner}^,  charlotte  russe,  cakes  and  jel- 
lies, with  his,  her,  its  or  their  name  or  names  or  other 
marks  or  devices,  branded,  stamped,  engraved,  stenciled, 
blown,  impressed  or  otherwise  produced  upon  the  freez- 
ers, cans,  blocks,  moulds,  trays,  bricks,  pans,  tanks, 
pails,  kegs,  tubs,  refrigerators,  boxes,  spoons,  cutlery, 
glass,  china,  chairs,  tables  or  signs  used  by  him,  her,  it 
or  them,  may  file  in  the  office  of  the  clerk  of  the  county 
in  which  his,  her,  its  or  their  principal  place  of  business 
is  located,  or,  if  such  person,  persons,  corporation,  or 
corporations,  shall  manufacture  or  sell  out  of  this  state, 
then  in  any  county  in  this  state,  and  also  in  the  office 
of  the  secretary  of  state,  a  description  of  the  name  or 
names,  marks  or  devices,  so  used  by  him,  her,  it  or  them, 
respectively,  and  cause  such  description  to  be  printed 
once  in  each  week,  for  three  weeks  successively,  in  a 
newspaper  published  in  the  county  in  which  said  notice 
may  have  been  filed,  as  aforesaid,  except  that  in  the  city 
and  county  of  New  York,  and  the  city  of  Brooklyn,  in 
the  county  of  Kings,  such  publication  shall  be  made 
twice  in  each  week,  for  three  weeks  successively,  in  two 
daily  newspapers  published  in  the  cities  of  New  York 
and  Brooklyn  respectively. 

§  2.  It  is  hereby  declared  to  be  unlawful  for  any  per- 
son or  persons,  corporation  or  corporations,  to  make 
use  of,  for  similar  or  other  purposes,  any  such  freezers, 
cans,  blocks,  moulds,  trays,  bricks,  pans,  tanks,  pails, 
kegs,  tubs,  refrigerators,  boxes,  spoons,  cutlery,  glass, 
china,  chairs,  tables  or  signs  so  marked  or  distinguished, 
as  aforesaid,  with  or  by  any  name,  mark  or  device,  of 
which  a  description  shall  have  been  filed  and  published, 
as  provided  in  section  one  of  this  act,  or  to  deface,  erase, 
obliterate,  cover  up  or  otherwise  remove  or  conceal, 
any  such  name,  mark  or  device  thereon,  or  to  sell,  buy, 


STATE   TRADEMARK    STATUTES.  647 

give,  take  or  otherwise  dispose  of  or  traffic  in  the  same 
without  the  written  consent  of,  or  unless  the  same  shall 
have  been  purchased  from  the  person  or  persons,  corpo- 
ration or  corporations,  whose  mark  or  device  shall  be 
or  shall  have  been  in  or  upon  the  said  freezers,  cans, 
blocks,  moulds,  trays,  bricks,  pans,  tanks,  pails,  kegs, 
tubs,  refrigerators,  boxes,  spoons,  cutlery,  glass,  china, 
chairs,  tables  or  signs  trafficked  in,  used  or  handled  as 
aforesaid.  Any  person  or  persons,  corporation  or  cor- 
l)orations  offending  against  the  provision  of  this  sec- 
tion, shall  be  deemed  guilty  of  a  misdemeanor,  and  shall 
be  punished  for  the  first  offense  by  imprisonment  not 
less  than  ten  days  nor  more  than  one  year,  or  by  a  fine 
of  three  dollars  for  each  and  every  such  article  named 
and  described  in  section  one,  sold,  used,  disposed  of, 
bought  or  trafficked  in,  or  by  both  such  fine  and  im- 
prisonment, and  for  each  subsequent  offense  by  impris- 
onment not  less  than  twenty  days  nor  more  than  one 
year,  or  by  a  fine  of  not  less  than  five  dollars  nor  more 
than  ten  dollars  for  each  and  every  such  article  named 
and  described  in  section  one,  sold,  used,  disposed  of, 
bought  or  trafficked  in,  or  by  both  such  fine  and  im- 
prisonment, in  the  discretion  of  the  magistrate  before 
whom  the  offense  shall  be  tried. 

§  3.  The  use  by  any  person  other  than  the  person 
or  persons,  corporation  or  corporations,  whose  device, 
name  or  mark  shall  be  or  shall  have  been  upon  the  same 
without  such  written  consent  or  purchase  as  aforesaid, 
of  any  such  article  named  and  described  in  section  one, 
a  description  of  the  name,  mark  or  device  whereon  shall 
have  been  filed  and  published  as  herein  provided,  for 
similar  or  other  purposes,  or  the  buying,  selling,  using, 
disposing  of,  or  trafficking  in  any  such  article  named 
and  described  in  section  one,  by  any  person  other  than 
said  persons  or  corporations  having  a  name,  mark  or  de- 
vice thereon  of  such  owner,  without  such  written  con- 
sent, or  the  having  by  any  junk  dealer  or  dealers  in  sec- 


648  APPENDIX  H. 

ond-hand  articles,  possession  of  any  such  article,  named 
and  described  in  section  one,  a  description  of  the  marks, 
names  or  devices,  whereon  shall  have  been  so  filed  and 
published  as  aforesaid,  without  such  written  consent, 
shall,  and  is  hereby  declared  to  be  presumptive  evidence 
of  the  said  unlawful  use,  purchase  and  traffic  in  of  such 
freezers,  cans,  blocks,  moulds,  trays,  bricks,  pans,  tanks, 
pails,  kegs,  tubs,  refrigerators,  boxes,  spoons,  cutlery, 
glass,  china,  chairs,  tables  or  signs. 

§  4.  AVlienever  any  person,  persons  or  corporation 
mentioned  in  section  one  of  this  act,  or  his,  her,  its  or 
their  agent,  shall  make  oath  before  any  magistrate,  that 
he,  she,  or  it,  has  reason  to  believe,  and  does  believe, 
that  any  of  his,  her,  its  or  their  freezers,  cans,  blocks, 
moulds,  trays,  bricks,  pans,  tanks,  pails,  kegs,  tubs,  re- 
frigerators, boxes,  spoons,  cutlery,  glass,  china,  chairs, 
tables  or  signs,  a  description  of  the  names,  marks  or 
devices  whereon  has  been  so  filed  and  published  as 
aforesaid,  are  being  unlawfully  used  for  similar  or  other 
purposes,  or  that  any  junk  dealer  or  dealer  in  second- 
hand articles,  or  any  other  person  or  corporation,  has 
any  such  article  as  named  and  described  herein,  in  his, 
her  or  its  possession,  or  secreted  in  any  place,  the  said 
magistrate  must  thereupon  issue  a  search  warrant  to 
discover  and  obtain  the  same,  and  may  also  cause  to  be 
brought  before  him  the  person  in  whose  possession  such 
articles  as  named  and  described  herein  may  be  found, 
and  shall  then  inquire  into  the  circumstances  of  such 
possession,  and  if  such  magistrate  finds  that  such  person 
has  been  guilty  of  a  violation  of  section  two  of  this  act, 
he  must  impose  the  punishment  herein  prescribed,  and 
he  shall  also  award  possession  of  the  property  taken 
upon  such  warrant  to  the  owner  thereof. 

§  5.  The  requiring,  taking  or  accepting  of  any  de- 
posit, for  any  purpose,  upon  any  freezer,  can,  block, 
mould,  tray,  brick,  pan,  tank,  pail,  tub,  keg,  refrigerator, 
box,   spoon,   cutlery,   glass,   china,   chair,  table  or  sign. 


STATE  TRADEMARK  STATUTES.  649 

shall  not  be  deemed  or  constitute  a  sale  of  such  prop- 
erty, either  optional  or  otherwise,  in  any  proceeding 
under  this  act. 

§  G.  Any  person  or  j^ersons,  corporation  or  corpora- 
tions, that  has  or  have  heretofore  filed  in  the  offices  men- 
tioned in  section  one  of  this  act,  a  description  of  the 
name  or  names,  mark  or  devices  upon  his,  her,  their  or 
its  property,  therein  mentioned,  and  has  caused  the  same 
to  be  published  according  to  the  law  existing  at  the  time 
of  such  filing  and  publication,  shall  not  be  required  to 
again  file  and  publish  such  description  to  be  entitled  to 
the  benefits  of  this  act. 

Ch.  415,  Laws  of  1897,  contains  the  following  sections: 

§  15.  Labels,  brands,  etc.,  used  by  labor  organizations. 
A  union  or  association  of  employes  may  adopt  a  device 
in  the  form  of  a  label,  brand,  mark,  name  or  other  char- 
acter for  the  purpose  of  designating  the  products  of  the 
labor  of  the  members  thereof.  Duplicate  copies  of  such 
device  shall  be  filed  in .  the  office  of  the  Secretary  of 
State,  who  shall,  under  his  hand  and  seal,  deliver  to  the 
union  or  association  filing  or  registering  the  same  a  cer- 
tified copy  and  a  certificate  of  the  filing  thereof,  for 
which  he  shall  be  entitled  to  a  fee  of  one  dollar. 

§  16.  Illegal  use  of  labels,  et  cetera,  a  misdemeanor; 
injunction  proceedings.— A  person  who,  (1)  shall  in  any 
way  use  or  display  the  label,  brand,  mark,  name  or 
character,  adopted  by  any  such  union  or  association  as 
provided  in  the  preceding  section,  without  the  consent 
or  authority  of  such  union  or  association;  or  (2)  shall 
counterfeit  or  imitate  any  such  label,  brand,  mark,  name 
or  other  character,  or  knowingly  sells  or  disposes  or 
keeps  or  has  in  his  possession  with  intent  to  sell  or  dis- 
pose of,  or  keeps  or  has  in  his  possession  with  intent  to 
sell,  or  dispose  of  any  goods,  wares,  merchandise  or 
other  products  of  labor  contained  in  any  box,  case,  can, 
or  package,  to  which,  or  on  which  any  such  counterfeit 
or    imitation    is    attached,    affixed,    printed,     painted, 


650  APPENDIX  II. 

stamped  or  impressed,  is  guilty  of  a  misdemeanor,  and 
shall  be  punished  by  a  fine  of  not  less  than  one  hundred 
dollars,  nor  more  than  five  hundred  dollars,  or  by  im- 
prisonment for  not  less  than  three  months  nor  more  than 
one  year,  or  by  both  such  fine  and  imprisonment. 

The  Penal  Code  contains  the  following  provisions 
(Penal  Code,  1901); 

§  364.  A  iDorson  who,  knowingly,  in  a  case  where  pro- 
vision for  the  punishment  for  the  oifense  is  not  other- 
wise specially  made  by  statute: 

1.  Falsely  makes  or  counterfeits  a  trademark;  or, 

2.  Affixes  to  any  article  of  merchandise,  a  false  or 
counterfeit  trademark,  knowing  the  same  to  be  false  and 
counterfeit,  or  the  genuine  trademark,  or  an  imitation  of 
the  trademark  of  another,  without  the  latter 's  con- 
sent; or, 

3.  Sells,  or  keeps,  or  offers  for  sale,  an  article  of 
merchandise,  to  which  is  affixed  a  false  or  counterfeit 
trademark,  or  the  genuine  trademark,  or  an  imitation  of 
the  trademark  of  another,  without  the  latter 's  con- 
sent; or, 

4.  Has  in  his  possession  a  counterfeit  trademark, 
knowing  it  to  be  counterfeit,  or  a  die,  plate,  brand,  or 
other  thing  for  the  puri^ose  of  falsely  making  or  counter- 
feiting a  trademark;  or, 

5.  Makes  or  sells,  or  offers  to  sell  or  dispose  of,  or, 
has  in  his  possession  with  intent  to  sell  or  dispose  of, 
an  article  of  merchandise  with  such  a  trademark  as  to 
appear  to  indicate  the  quantity,  quality,  character,  place 
of  manufacture  or  production,  or  persons  manufacturing 
or  producing  the  article,  but  not  indicating  it  truly;  or, 

6.  Wlio  knowingly  sells,  offers  or  exposes  for  sale, 
any  goods  which  are  represented  in  any  manner,  by 
word  or  deed,  to  be  the  manufacture  or  product  of  any 
person,  firm  or  corporation,  other  than  himself,  unless 
such  goods  are  contained  in  the  original  packages  and 
under  the  labels,  marks  or  names  placed  thereon  by  the 


STATE  TRADEMARK  STATUTES.  651 

manufacturer  who  is  entitled  to  use  such  marks,  names, 
brands  or  trademarks;  or, 

7.  Who  shall  sell,  or  expose  for  sale,  any  goods  in 
bulk,  to  which  no  label  or  trademark  shall  be  attached, 
and  shall  by  representation,  name  or  mark  written  or 
I^rinted  thereon,  represent  that  such  goods  are  the  pro- 
duction or  manufacture  of  a  person  who  is  not  the 
manufacturer;  is  guilty  of  a  misdemeanor. 

Page  149. 

§  365.  The  expression  ''article  of  merchandise,"  as 
used  in  this  title,  signifies  any  goods,  wares,  work  of  art, 
commodity,  compound,  mixture  or  other  preparation  or 
thing,  which  may  be  lawfully  kept  or  offered  for  sale. 

§  366.  A  ''trademark"  is  a  mark  used  to  indicate  the 
maker,  owner  or  seller  of  an  article  of  merchandise,  and 
includes  among  other  things,  any  name  of  a  person  or 
corporation,  or  any  letter,  word,  device,  emblem,  figure, 
seal,  stamp,  diagram,  brand,  wrapper,  ticket,  stopper, 
label  or  other  mark,  lawfully  adopted  by  him,  and  usu- 
ally afiSxed  to  an  article  of  merchandise  to  denote  that 
the  same  was  imported,  manufactured,  produced,  sold, 
compounded,  bottled,  packed  or  otherwise  prepared  by 
him;  and  also  a  signature  or  mark  used  or  commonly 
placed  by  a  painter,  sculptor  or  other  artist,  upon  a 
painting,  drawing,  engraving,  statue  or  other  work  of 
art,  to  indicate  that  the  same  was  designed  or  executed 
by  him. 

§  367.  A  trademark  is  deemed  to  be  affixed  to  an  ar- 
ticle of  merchandise  when  it  is  placed  in  any  manner  in, 
or  upon,  either 

1.  The  article  itself;  or, 

2.  A  box,  bale,  barrel,  bottle,  case,  cask,  or  other  ves- 
sel or  package,  or  a  cover,  wrapper,  stopper,  brand, 
label  or  other  thing,  in,  by  or  with  which  the  goods  are 
packed,  enclosed  or  otherwise  prepared  for  sale  or  dis- 
position. 


652  APPENDIX  H. 

§  368.  An  ''imitation  of  a  trademark"  is  that  which 
so  far  resembles  a  genuine  trademark  as  to  be  likely  to 
induce  the  belief  that  it  is  genuine,  whether  by  the  use 
of  words  or  letters  similar  in  appearance  or  in  sound,  or 
hj  any  sign,  device  or  other  means  whatsoever. 

§  369.  Refilling  or  selling  stamped  mineral  water  bot- 
tles, platters,  at  cetera.— Any  person  engaged  in  making, 
bottling,  packing,  selling  or  disposing  of  milk,  ale,  beer, 
cider,  mineral  water  or  other  beverage  or  in  making, 
selling,  or  disposing  of  articles  of  pastry,  may  register 
his  title  as  owner  of  a  trademark  by  filing  with  the  sec- 
retary of  state  and  the  clerk  of  the  county  where  the 
13rincipal  place  of  business  of  such  person  is  situated,  a 
description  of  the  marks  and  devices  used  by  him  in  his 
business,  and  in  case  same  has  not  been  heretofore  pub- 
lished according  to  the  laws  existing  at  the  time  of  pub- 
lication, causing  the  same  to  be  published  in  a  news- 
jDaper  of  the  county,  three  weeks  daily,  if  in  the  city  of 
New  York  or  Brooklyn,  and  weekly  if  in  any  other  part 
of  the  state;  but  no  trademark  shall  be  filed  which  is 
not  and  cannot  become  a  lawful  trademark,  or  which 
is  merely  the  name  of  a  person,  firm  or  corporation  un- 
accompanied by  a  mark  sufficient  to  distinguish  it  from 
the  same  name  when  used  by  another  person.  After 
such  registration,  the  use  without  the  consent  of  the 
owner  of  the  trademark  so  described  or  the  filling  of  any 
bottle,  siphon,  barrel,  platter,  vessel,  or  thing  for  the 
purpose  of  sale,  or  for  the  sale,  therein,  of  any  article 
of  the  same  general  nature  and  quality  which  said  bot- 
tle, siphon,  barrel,  platter,  vessel  or  other  thing  before 
contained,  without  the  obliteration  or  defacement  of  thei 
trademark  upon  it,  when  such  trademark  can  be  obliter- 
ated or  defaced  without  substantial  injury  to  the  bottle, 
siphon,  barrel,  platter,  vessel  or  other  thing  so  as  to  pre- 
vent its  wrongful  use,  shall  he  deemed  a  misdemeanor. 

Section  370.  Keeping  such  bottles,  platters,  et  cetera, 
with  intent  to  refill  or  sell  them.— Any  person  engaged 


STATE   TRADEMARK    STATUTES.  653 

in  the  business  of  buying  and  selling  bottles,  siphons, 
barrels,  platters,  or  other  vessels  or  things,  who  shall 
with  intent  to  defraud  the  registered  owner  of  the  trade- 
mark, knowingly  sell  or  offer  for  sale  any  lx)ttle, 
siphon,  barrel,  platter,  vessel,  or  other  thing,  to  any  jjer- 
son,  who  he  has  reason  to  believe  wrongfully  intends  to 
use  the  trademark  upon  it,  or  to  fill  such  bottle,  siphon, 
barrel,  platter,  vessel  or  other  thing  in  violation  of  sec- 
tion three  hundred  and  sixty-nine,  shall  be  deemed  guilty 
of  a  misdemeanor. 

Section  371.  Search  for  bottles,  platters,  et  cetera.— 
Whenever  a  registered  owner  of  a  trademark,  or  his 
agent,  makes  oath  before  a  magistrate  that  he  has  reason 
to  believe  and  does  believe,  stating  the  grounds  of  his 
belief,  that  a  bottle,  siphon,  barrel,  platter,  vessel  or 
other  thing  to  which  is  affixed  a  trademark  belonging  to 
him  is  being  used  or  filled,  or  has  been  sold  or  offered 
for  sale,  by  any  person  whomsoever,  in  violation  of  the 
preceding  section,  then  the  magistrate  may  issue  a 
search  warrant  to  discover  the  thing  and  cause  the  per- 
son having  it  in  possession  to  be  brought  before  him  and 
may  thereupon  inquire  into  the  circumstances,  and  if 
on  examination,  he  finds  that  such  person  has  been 
guilty  of  the  offense  charged,  he  may  hold  the  offender 
to  bail  to  await  the  action  of  the  grand  jury,  and  the 
offender  shall  also  be  liable  to  an  action  on  the  case  for 
damages,  for  such  wrongful  use  of  such  trademark  at 
the  suit  of  the  owner  thereof,  and  the  party  aggrieved, 
shall  also  have  his  remedy  according  to  the  course  of 
equity  to  enjoin  the  wrongful  use  of  his  trademark,  and 
to  recover  compensation  therefor,  in  any  court  having 
jurisdiction  over  the  person  guilty  of  such  wrongful  use. 

Section  438.  False  labels.— A  person  who,  with  intent 
to  defraud,  either 

1.  Puts  upon  an  article  of  merchandise,  or  upon  a 
cask,  bottle,  stopper,  vessel,  case,  cover,  wrapper,  pack- 
age, band,  ticket,  label  or  other  thing,  containing  or  cov- 


654  APPENDIX  H. 

ering  such  an  article,  or  with  which  such  an  article  is 
intended  to  be  sold,  or  is  sold,  any  false  description  or 
other  indication  of  or  respecting  the  kind,  number,  quan- 
tity, weight  or  measure  of  such  article,  or  any  part 
thereof,  or  the  place  or  country  where  it  was  manufac- 
tured or  produced  or  the  quality  or  grade  of  any  such 
article,  if  the  quality  or  grade  thereof  is  required  by  law 
to  be  marked,  branded,  or  otherwise  indicated  on  or  with 
such  article;  or 

2.  Sells  or  offers  for  sale  an  article,  which  to  his 
knowledge  is  falsely  described  or  indicated  upon  any 
such  package,  or  vessel  containing  the  same,  or  label 
thereupon,  or  any  of  the  particulars  specified ;  or 

3.  Sells  or  exposes  for  sale  any  goods  in  bulk  to 
which  no  name  or  trademark  shall  be  attached,  and 
orally  or  otherwise  represents  that  such  goods  are  the 
manufacture  or  jjroduction  of  some  other  than  the  actual 
manufacturer  or  producer,  in  a  case  where  the  punish- 
ment for  such  offense  is  not  sj^ecially  provided  for  other- 
wise by  statute;  is  guilty  of  a  misdemeanor. 

§  438a.  Using  false  marks  as  to  manufacture.— A  person 
who,  with  intent  to  defraud  or  to  enable  another  to  de- 
fraud any  person,  manufacturers  or  knowingly  sells  or 
causes  to  be  manufactured  or  sold,  any  article,  marked, 
stamped  or  branded,  or  encased  or  enclosed  in  any  box, 
bottle  or  wrapper,  having  thereupon  any  engraving  or 
printed  label,  stamp,  imprint,  mark  or  trademark,  which 
article  is  not  the  manufacture,  workmanship  or  produc- 
tion of  the  person  named,  indicated  or  denoted  by  such 
m.arking,  stamping  or  branding,  or  by  or  upon  such  en- 
graving, jDrinted  label,  stamp,  imprint,  mark  or  trade- 
mark, is  guilty  of  a  misdemeanor. 

As  to  search  warrants  under  §  369,  Penal  Code  1893, 
see  People  v.  Hogan,  29  N.  Y.  St.  110.  For  further  rul- 
ings under  that  section  see  Mullins  v.  People,  23  How, 
Pr.  289,  24  K  Y.  399.  People  v.  Cannon,  139  N.  Y.  32, 
34  X.  E.  Rep.  75-9. 


STATE   TKiU)EMARK   STATUTES.  655 

Chapter  219,  Laws  1893,  relates  to  the  protection  of 
labels  of  unions  or  associations  of  workingmen,  and  pro- 
vides a  penalty  for  selling  cigars  bearing  a  counterfeit 
label.  In  an  action  for  the  recovery  of  this  penalty,  it 
was  held  that  knowledge,  or  intent  to  injure  or  defraud 
were  not  ingredients  in  the  offense  prohibited,  and  that 
allegations  of  the  knowledge,  or  intent  to  injure  or  de- 
fraud should  be  treated  as  surplusage. 

Bulena  v.  Neumun,  31  N.  Y.  Supj).  449.  See  also  Per- 
kins V.  Heert,  158  N.  Y.  306,  53  N.  E.  Rep.  18. 

A  conviction  under  §  364,  penal  code,  was  sustained 
where  the  defendant  printed  a  label  containing  a  trade- 
mark at  the  solicitation  of  the  agent  of  the  owner  of  the 
trademark. 

People  V.  Gluckman,  70  N.  Y.  Supp.  173. 

In  sustaining  a  conviction  under  the  same  section,  it 
was  held  to  be  immaterial  that  the  prosecutor  knew  that 
he  was  purchasing  counterfeit  goods. 

People  V.  Hilfman,  70  N.  Y.  Supp.  621. 

In  sustaining  another  conviction  under  this  section, 
the  court  of  appeals  similarly  held  that  it  was  no  de- 
fense that  the  Act  relied  on  for  conviction  was  done  at 
the  instance  of  the  prosecutor. 

People  V.  Krivitzkij,  168  N.  Y.  182,  61  N.  E.  Rep.  175. 

TVHiere  the  plaintiffs  had  filed  a  certificate  pursuant  to* 
§  363,  penal  code,  setting  forth  their  intention  to  do 
business  under  the  name  ''American  Watchman  Clock 
Co.",  and  subsequently  prepared  to  incorporate  under 
that  name,  and  the  defendant  having  knowledge  of  the 
facts,  and  to  forestall  the  plaintiff's  proposed  incorpora- 
tion, thereupon  incorporated  under  the  same  name,  in- 
junction was  granted  upon  the  ground  of  unfair  com- 
petition. 

Petfes  V.  American  Watchman's  Clock  Co.,  85  N.  Y. 
Supp.  900. 

That  one  who  is  convicted  of  counterfeiting  or  imitati 


Go6  APPENDIX  H. 

ing  a  stamp,  wrapper,  or  label  is  also  liable  to  civil  dam- 
ages, See  Broivn  v.  Mercer,  37  N.  Y.  Super.  Ct.  265. 

Laws  of  1887,  Chap.  377,  §  2,  as  amended  by  laws  of 
1888,  Chap.  181,  made  it  unlawful  to  use  boxes,  bottles, 
and  other  packages  having  the  owner's  name,  or  other 
marks  or  devices,  "branded,  stamped,  engraved,  etched, 
blown,  impressed,  or  otherwise  produced  upon  such  bot- 
tles, etc." 

It  was  held  that  the  use  of  bottles  bearing  lithographic 
labels  containing  the  name  of  another  was  not  a  viola- 
tion of  this  act. 

People  V,  FAfenhein,  20  N.  Y.  Supp.  364. 

A  section  of  the  same  act  making  it  a  misdemeanor 
to  re-fill  registered  stamped  bottles  of  the  manufacturers 
of  soda  water,  and  the  like,  was  held  to  apply  only  to 
dealing  in  empty  bottles  after  the  original  contents  had 
been  removed. 

People  V.  Cannon,  139  N.  Y.  32,  34  N.  E.  Rep.  759. 

Under  the  laws  of  1862,  Chap.  306,  §  4,  and  laws  of 
1863,  Chap.  209,  §  2,  relating  to  the  use  of  false  stamps, 
labels,  or  trademarks,  and  providing  a  penalty  therefor, 
it  was  held  essential  to  a  recovery  of  the  penalty  that 
the  fraudulent  intent  of  the  defendant  be  shown. 

Loiv  V.  Hall,  47  N.  Y.  104. 

Under  the  Union  Label  Act,  Laws  1893,  Chap.  219, 
certain  evidence  is  reviewed  and  held  not  sufficient  to 
sustain  a  judgment  for  plaintiff  in  Higgins  v.  Dakin,  33 
N.  Y.  Supp.  890,  86  Hun,  461. 

Laws  of  1887,  Chap.  377,  amended  by  laws  of  1888, 
Chap.  181,  relating  to  the  registration  of  marks  used  on 
bottles,  it  is  required  that  the  certificate  filed  with  the 
County  Clerk,  describing  the  names,  marks  and  devices 
used  on  the  bottles  be  certified.  Consequently,  such  a 
description  is  admissible  in  evidence,  though  defectively 
acknowledged. 

People  V.  Bartholf,  66  Hun,  626,  20  N.  Y.  Supp.  782. 


STATE  TRADEilARK  STATUTES.  657 

Directions  for  Registration  Applications. 

The  Secretary  of  State  has  published  the  following 
directions,  concerning  applications  for  registration  un- 
der the  foregoing  statutes: 

Under  either  of  these  provisions  a  statement  in  writ- 
ing should  be  made  by  the  person,  firm,  organization  or 
corporation  showing  the  adoption  of  the  name,  mark, 
label,  brand  or  device,  to  which  should  be  appended  an 
affidavit  verifying  the  same. 

This  should  be  filed  in  the  Secretary  of  State's  office 
and  (except  under  Chapter  415,  Laws  of  1897)  in  the 
office  of  the  proper  County  Clerk,  followed  with  the  pub- 
lication in  a  newspaper  where  required  by  either  of  the 
foregoing  laws. 

The  fee  of  this  office  for  filing  a  statement  under 
either  of  the  preceding  laws  is  one  dollar. 

This  office  has  no  blank  forms. 


NORTH  CAROLINA. 

AN  ACT  to  provide  for  registration  of  labels,  trademarks  and  designs. 
The  General  Assembly  of  North  Carolina  do  enact: 

Section  1.  It  shall  be  lawful  for  any  person  or  cor- 
poration to  adopt  for  their  protection  and  file  for  regis- 
try, or  cause  to  be  filed  for  registry,  as  herein  provided, 
any  label,  trademark,  term  or  design  that  has  been  used 
or  is  intended  to  be  used  for  the  purpose  of  designating, 
making  known  or  distinguishing  any  goods,  wares,  mer- 
chandise or  products  of  labor  that  have  been  or  may  be 
wholly  or  partly  made,  manufactured,  produced,  pre- 
pared, i)acked  or  put  on  sale  by  any  person  or  corpora- 
tion, or  to  or  upon  which  any  work  or  labor  has  been 
applied  or  expended  by  any  person,  or  by  any  member 
or  members  of  any  coii:)oration  that  has  adopted  and 

42 


658  APPENDIX  H. 

filed  for  registry,  or  that  may  adopt  and  file  for  registry, 
any  such  label,  trademark,  term  or  design  as  aforesaid, 
or  announcing  or  indicating  that  the  same  have  been 
made  in  whole  or  in  part  by  any  such  person  or  corpora- 
tion, or  by  any  member  thereof. 

Sec.  2.  Whenever  any  jDcrson  or  corporation  shall 
adopt  and  file  for  registry,  or  cause  to  be  adopted  and 
filed  for  registry,  any  label,  trademark,  term  or  design 
pursuant  to  the  provisions  of  this  act,  the  property, 
privileges,  rights,  remedies  and  interests  in  and  to  any 
such  label,  trademark,  tenu  or  design,  and  in  and  to 
the  use  of  same,  provided  or  given  by  this  act  to,  or 
otherwise  conferred  upon  or  enjoyed  by,  the  person  or 
corporation  filing  the  same,  or  causing  tlie  same  to  be 
filed,  for  the  registry,  shall  be  fully  and  completely 
secured,  preserved  and  protected  as  the  property  of 
those  entitled  to  the  same  before  any  such  label,  trade- 
mark, term  or  design  has  been  actually  applied  to  any 
goods,  wares,  merchandise,  or  product  of  labor,  and  put 
upon  the  market  for  sale  or  otherwise,  and  before  any 
use  or  appropriation  of  any  such  label,  trademark,  term 
or  design  has  been  made  in  connection  with  any  such 
goods,  wares,  merchandise  or  product  of  labor,  as  well 
as  after  the  same  has  been  used  or  applied  to  designate, 
make  known  or  distinguish  any  such  goods,  wares,  mer- 
chandise, or  product  of  labor  and  they  have  been  put 
upon  the  market. 

Sec.  3.  Any  person,  or  corporation  that  has  hereto- 
fore adopted  and  used,  or  shall  hereafter  adopt  and  use 
any  label,  trademark,  term  or  design  as  herein  provided, 
may  file  the  same  for  registry  in  the  office  of  the  Secre- 
tary of  State,  or  by  leaving  two  copies,  fac  similes  or 
counterparts  thereof,  with  the  said  Secretaiy,  and  filing 
therewith  a  statement  in  the  form  of  an  affidavit,  sub- 
scribed and  sworn  to  by  any  such  person,  or  by  any 
officer,  agent  or  attorney  of  any  such  corporation,  speci- 
fying the  person  or  corporation  by  whom,  or  on  whose 


STATE   TRADEMARK    STATUTES.  659 

belialf,  any  such  label,  trademark,  term  or  design  is  filed, 
and  the  class  or  character  of  the  goods,  wares,  merchan- 
dise or  products  of  labor  to  which  the  same  has  been,  or 
is  intended  to  be  appropriated  or  applied,  and  that  the 
person  or  corporation  so  filing  the  same,  or  on  whose  be- 
half the  same  is  so  filed,  has  the  right  to  the  use  of  said 
label,  trademark,  term  or  design,  and  that  no  other  per- 
son, finn,  or  corporation  has  the  right  to  such  use,  either 
in  the  identical  form  or  in  any  such  near  resemblance 
thereto  as  might  be  calculated  to  deceive,  without  the 
permission  or  authority  of  the  person  or  corporation 
filing  the  same,  or  causing  the  same  to  be  filed,  and 
that  the  copies,  facsimiles  or  counterparts  filed  here- 
with, are  true  and  correct  copies,  fac  similes  or  counter- 
parts of  the  genuine  label,  trademark,  term  or  design  of 
the  person  or  corporation  filing  the  same,  or  causing  the 
same  to  be  filed;  and  there  be  paid  for  such  registry  a 
fee  of  one  dollar  to  the  Secretary  of  State  for  the  use  of 
the  State,  and  the  same  recording  fees  required  by  the 
general  corporations  act,  Public  Laws  1901,  chapter  2. 

Sec.  4.  The  Secretary  of  State  upon  the  filing  of  any 
such  label,  trademark,  term  or  design,  that  is  not  in  con- 
flict with  the  next  section  hereof,  shall  register  the  same, 
and  shall  deliver  to  the  person  or  corporation  filing  the 
same,  or  causing  the  same  to  be  filed,  as  many  certified 
copies  thereof,  with  his  certificate  of  such  registry,  as 
any  such  person  or  corporation  may  request,  and  for 
every  such  copy  and  certificate  there  shall  be  paid  to  the 
Secretaiy  of  State,  for  the  use  of  the  State,  a  fee  of 
one  dollar;  and  any  such  certified  copy  and  certificate 
shall  be  admissible  in  evidence  and  competent  and  suf- 
ficient proof  of  the  adoption,  filing  and  registry  of  any 
such  label,  trademark,  term  or  design,  by  any  such  ])er- 
son  or  corporation,  in  any  action  or  judicial  proceed- 
ing in  any  of  the  Courts  of  this  State,  and  of  due  com- 
pliance with  the  provisions  of  this  Act:  Provided,  how- 
ever,   that    such   certificate   shall   not  be  assignable   or 


660  APPENDIX  H. 

transferable  by  the  person  or  corporation  to  whom  the 
same  is  issued  by  the  Secretary  of  State. 

Sec.  5.  It  shall  not  be  lawful  for  the  Secretary  of 
State  to  register,  or  permit  to  be  registered,  for  any 
person  or  corj^oration  any  label,  trademark,  term  or  de- 
sign, that  is  in  the  identical  form  of  any  other  label, 
trademark,  term  or  design  theretofore  filed  by  or  on  be- 
half of  any  other  i^erson,  or  corporation,  or  that  bears 
any  such  near  resemblance  thereto  as  may  be  calculated 
to  deceive,  or  that  would  be  liable  to  be  mistaken  there- 
for ;  and  any  person  or  corporation  who  shall  file  or  pro- 
cure the  filing  and  registry  of  any  label,  trademark,  term 
or  design  in  the  office  of  the  Secretary  of  State,  under 
the  provisions  of  this  Act,  by  making  any  false  or  frau- 
dulent representations  or  declarations,  with  fraudulent 
intent,  shall  be  liable  to  pay  any  damages  sustained  in 
consequence  of  any  such  registry,  to  be  recovered  by  or 
in  behalf  of  the  party  injured  thereby. 

Sec.  6.  Whenever  any  person  or  corporation  has 
heretofore  adopted  and  filed  for  record  or  registry,  or 
shall  hereafter  adopt  and  file  for  registry,  any  label, 
trademark,  term  or  design,  or  cause  the  same  to  be  done, 
as  herein  provided,  and  the  same  shall  have  been  regis- 
tered pursuant  to  this  act,  it  shall  be  unlawful  for  any 
other  person  or  corporation  to  manufacture,  use,  sell, 
offer  for  sale,  or  in  any  way  utter  or  circulate  any 
counterfeit  or  imitation  of  any  such  label,  trademark, 
term  or  design,  or  have  in  possession,  with  intent  that 
the  same  shall  be  sold  or  disposed  of,  any  goods,  wares, 
merchandise  or  product  of  labor  to  which  or  on  which 
any  counterfeit  or  imitation  of  any  such  label,  trademark, 
term  or  design  is  attached,  affixed,  printed,  stamped,  im- 
pressed or  displayed,  or  to  sell  or  dispose  of,  or  offer  to 
sell  or  dispose  of,  or  have  in  possession  with  intent  that 
the  same  shall  be  sold  or  disposed  of,  any  goods,  wares^ 
merchandise,  or  product  of  labor  contained  in  any  box, 
ease,   can  or  package  to  which  or  on  which  any  such 


STATE  TRADESIARK  STATUl'ES.  661 

counterfeit  or   imitation    is    attached,    afl&xed    printed, 
stamped,    impressed    or    displayed. 

Sec.  7.  Whenever  any  person  or  corporation  has 
heretofore  adopted  and  filed  for  record  or  registry,  or 
shall  hereafter  adopt  and  file  for  registry,  any  label, 
trademark,  term  or  design,  as  herein  provided,  it  shall 
he  unlawful  for  any  other  person  or  corporation  to  make 
any  use,  sale,  offer  for  sale  or  display  of  the  genuine 
label,  trademark,  term  or  design  of  any  such  person  or 
corporation  filing  the  same,  or  to  have  any  such  genuine 
label,  trademark,  term  or  design  in  possession  with  in- 
tent that  the  same  shall  be  used,  sold,  offered  for  sale, 
or  displayed,  or  that  the  same  shall  be  applied,  attached 
or  displayed  in  any  manner  whatever  to  or  on  any 
goods,  wares  or  merchandise,  or  to  sell,  offer  to  sell,  or 
dispose  of,  or  have  in  possession  with  intent  that  the 
same  shall  be  sold  or  disposed  of  any  goods,  wares  or 
merchandise  in  any  box,  case,  can  or  package,  to  or 
•which  any  such  genuine  label,  trademark,  term  or  design 
of  any  such  person  or  corporation  is  attached,  affixed,  or 
displayed,  or  to  make  any  use  whatever  of  any  sucl^ 
genuine  label,  trademark,  term  or  design,  without  first 
obtaining  in  every  such  case  the  license,  consent  or  au- 
thority of  the  person  or  corporation  adopting,  filing  and 
registering  the  same,  or  causing  the  same  to  be  adopted, 
filed  and  registered;  and  any  such  license,  consent  or 
authority  may  be  revoked  and  terminated  at  any  time 
upon  notice,  and  thereafter  any  use  thereof  shall  be  a 
violation  of  this  act,  and  subject  those  violating  the 
same  to  all  the  liabilities  and  i:>enalties  herein  provided 
against  any  violation  thereof. 

Sec.  8.  The  Superior  Court  shall  have  jurisdiction  in 
all  eases  arising  or  commenced  therein  under  this  act  for 
the  violations  of  any  of  the  provisions  thereof,  and  any 
person  or  corporation  filing,  or  causing  to  l)e  filed,  for 
registry,  any  label,  trademark,  tenn  or  design  i)ursuant 
to  the  provisions  of  this  act,  shall  have  the  right  to  an 


662  APPENDIX  H. 

action  in  the  said  court  against  any  person  or  corpora- 
tions for  the  violation  of  any  of  the  provisions  of  this 
act  J  and  the  said  Court  is  hereby  empowered  and  re- 
quired to  enjoin  the  manufacture,  counterfeiting,  imita- 
tion, display,  use,  sale,  offer  of  sale,  circulating  or  utter- 
ing of  any  counterfeit  or  imitation  of  any  such  label, 
trademark,  term  or  design  of  any  such  person,  associa- 
tion, organization  or  corporation;  and  the  sale  or  dis- 
posal of  any  goods,  wares,  merchandise  or  product  of 
labor,  to  which  or  on  which  any  such  counterfeit  or  imi- 
tation, label,  trademark,  tenn  or  design  is  attached,  af- 
fixed, printed,  painted,  stamped  or  displayed,  or  any 
goods,  wares,  merchandise,  or  product  of  labor  contained 
in  any  box,  case,  can  or  package,  to  or  on  which  any 
such  counterfeit  or  imitation  is  attached,  affixed,  printed, 
painted,  stamped,  impressed  or  displayed;  and  further 
to  enjoin  the  manufacture,  use,  sale,  offer  of  sale,  or 
display,  or  (of)  any  genuine  label,  trademark,  term  or 
design  of  any  such  person,  or  corporation  filing  the 
same  as  aforesaid,  or  having  in  possession  any  such 
genuine  label,  trademark,  term  or  design  with  intent  that 
the  same  shall  be  used,  sold,  offered  for  sale  or  display, 
or  the  same  applied,  attached  or  displayed,  in  any  man- 
ner whatever  to  or  on  any  goods,  wares,  merchandise, 
or  product  of  labor;  or  the  selling  or  offer  to  sell  or 
dispose  of,  or  having  in  possession  with  the  intent  that 
the  same  shall  be  sold,  offered  for  sale  or  disposed  of, 
any  goods,  wares,  merchandise  in  any  box,  case  or  pack- 
age, to  or  on  which  any  such  genuine  label,  trademark, 
term  or  design  of  any  such  person  or  corporation  is  at- 
tached, affixed,  or  displayed,  and  from  making  any  other, 
or  any  use  whatever  of  any  such  genuine  label,  trade- 
mark, term  or  design,  without  having  first  obtained  in 
any  and  every  such  case,  the  consent  and  authority  of 
the  person  or  corporation  adopting,  filing  and  register- 
ing the  same,  or  causing  the  same  to  be  filed  and  regis- 
tered, as  herein  provided;  and  the  said  Superior  Court 


STATE  TRADEMARK  STATUTES.  663 

is  hereby  empowered  to  make  such  other  orders  and 
direct  such  other  proceedings  as  the  Court  may  deem 
necessary  and  proper  I'or  the  due  protection  oi"  the  rights 
of  complainants,  affecting  the  purposes  of  this  act,  the 
prevention  of  any  violation  of  any  of  the  provisions  of 
the  same,  and  secure  and  protect  any  and  all  persons 
or  coriX)rations  in  all  the  rights,  privileges,  property, 
and  interest  to  which  they  or  any  of  them  are  or  may  be 
entitled  in  any  such  label,  trademark,  term  or  design, 
under  any  of  the  provisions  of  this  act,  or  otherwise; 
and  it  shall  be  the  duty  of  the  said  Superior  Court  to 
award  to  the  complainant  or  complainants,  in  any  such 
action,  any  and  all  damages  resulting  from  any  such 
wrongful  use  of  any  such  label,  trademark,  term  or  de- 
sign by  any  defendant  or  defendants,  or  for  any  viola- 
tion of  any  of  the  provisions  of  this  act,  and  to  require 
any  such  defendant  or  defendants  to  pay  to  such  com- 
plainants any  and  all  such  damages,  together  with  all 
costs  incurred  by  any  such  complaint  in  any  such  action, 
or  proceeding;  and  the  said  Court  shall  also  order  and 
decree  that  the  defendants  pay  to  the  complainant  any 
and  all  i^rofits  obtained,  received  or  derived  from  any 
such  wrongful  use  or  any  violation  of  the  provisions  of 
this  act,  or  both  profits  and  damages,  and  that  any  such 
counterfeits,  or  imitations  of  any  such  labels,  trade- 
marks, terms  or  designs  in  the  possession  or  under  the 
control  of  the  defendant  or  defendants,  in  any  such  ac- 
tion, shall  be  delivered  up  to  an  officer  of  the  Court,  or 
to  the  complainant,  to  be  destroyed,  and  that  any  such 
genuine  labels,  trademarks,  terms  or  designs,  in  the  pos- 
session or  under  the  control  of  any  such  defendant  or 
defendant,  shall  be  delivered  up  to  the  complainant. 

Sec.  9.  That,  in  addition  to  any  other  rights,  rem- 
edies or  penalties  provided  by  this  act,  and  as  concur- 
rent therewith,  any  person  or  corporation  that  shall  vio- 
late any  of  the  provisions  of  this  act  shall  be  liable  to  a 
l^enalty  of  two  hundred  dollars,  to  be  recovered  by  any 


66-i  APPENDIX  H. 

such  person  or  corporation  that  has  adopted  and  filed, 
or  caused  the  same  to  be  done  as  aforesaid,  any  such 
label,  trademark,  term  or  design. 

Sec.  10.  This  act  shall  be  in  force  from  and  after 
April  1st,  1903. 

In  the  General  Assembly  read  three  times,  and  ratified 
this  9th  day  of  March,  A.  D.  1903. 

FORM  OF  APPLICATION  FOR  REGISTRATION. 

To  the  Secretary  of  State  of  the  State  of  North  Carolina: 

SIR: — In  compliance  with  the  requirements  of  an  act  of  the  Gen- 
eral Assembly  of  the  State  of  North  Carolina,  entitled  "An  Act  to 
provide  for  the  registration  of  labels,  trademarks  and  designs,"  ratified 

March  9th,  1903,  the  undersigned  resident  or  doing 

business  in  the  United  States,  having  heretofore  adopted  or  used,  or 

desiring  to  adopt  or  use  a  for  the  purposes  provided 

in  said  act,  and  desiring  to  file  the  same  for  record  in  the  office  of 
the  Secretary  of  State  of  the  State  of  North  Carolina,  hereby  certify: 
1st.     The  name  of  the  person  or  persons,  copartnership  or  corpora- 
tion, so  filing,  is 

2d.    His  or  its  residence,  location  or  place  of  business  is  

3d.  The  class  of  merchandise,  and  the  particular  description  of 
goods  comprised  therein  


The  trademark  consists  of  

Two  copies  of  fac-similes  of  said  mark  are  tendered  herewith. 
4th.     The  class  to  which  it  has  been  or  is  intended  to  be  appropriated 

5th.    The  length  of  time,  if  any,  during  which  it  has  been  in  use 

State  of  

County  of  — 


ss: 


Personally  appeared  before  me,  this —day  of ,  A.  D.  190 — 

who  being  duly  sworn,  according  to  law,  depose  and  say  that  the  state- 
ments contained  in  the  foregoing  instruments  are  true;  that  the 


so  filing  such  has  a  right  to  use  the  same,  and  that  no  other 

person  or  persons,  firm  or  corporation,  has  the  right  to  such  use,  either 
in  the  identical  form  or  in  any  such  near  resemblance  thereto,  as  may 
be  calculated  to  deceive,  and  that  the  fac-similes,  copies  or  counter- 
parts* filed  herewith  are  true  and  correct. 


Sworn  and  subscribed  before  me,  the  day  and  year  aforesaid. 


♦Note. — Two  copies,  counterparts  or  fac-similes  of  the  trademark, 
etc.,  must  be  filed  with  this  application. 
Filed,  190— 


Secretary  of  State. 


STATE  TRADEMARK  STATUTES.  665 

NORTH  DAKOTA. 
Rev.  Codes  1899. 

§  3485.  One  who  produces  or  deals  in  a  particular 
thing  or  conducts  a  particular  business,  may  appropriate 
to  his  exclusive  use  as  a  trademark  any  form,  symbol  or 
name  which  has  not  Ix^en  so  appropriated  by  another  to 
designate  the  origin  or  ownership  thereof;  but  he  cannot 
exclusively  appropriate  any  designation  or  part  of  a 
designation  which  relates  only  to  the  name,  quality,  or 
the  description  of  the  thing  or  business,  or  the  place 
where  the  thing  is  produced  or  the  business  is  carried 
on. 

§  3486.  The  good  will  of  a  business  is  the  expectation 
of  continued  public  patronage,  but  it  does  not  include  a 
right  to  use  the  name  of  any  person  from  whom  it  is  ac- 
quired. 

J?  3487.  The  good  will  of  a  business  is  jiroperty, 
transferable  like  any  other. 

§  3979.  One  who  sells  or  agrees  to  sell  any  article  to 
which  there  is  affixed  or  attached  a  trademark,  thereby 
warrants  that  mark  to  be  genuine  and  lawfully  used. 

§  3980.  One  who  sells  or  agrees  to  sell  any  article  to 
which  there  is  affixed  or  attached  a  statement  or  mark  to 
express  the  quantity  or  quality  thereof  or  the  place 
where  it  was  in  whole  or  in  part  produced,  manufac- 
tured or  prepared  thereby  warrants  the  truth  thereof. 

§  7256.  Every  person  who  willfully  forges,  counter- 
feits or  procures  to  be  forged  or  counterfeited  any  trade- 
mark usually  affixed  by  any  person  to  any  goods  of  such 
person,  with  intent  to  pass  off  any  goods  to  which  such 
forged  or  counterfeit  trademark  is  affixed  or  intended  to 
be  affixed,  as  the  goods  of  such  person,  is  guilty  of  a 
misdemeanor. 

§  7257.    Every  person  who,  with  intent  to  defraud,  has 


666  APPENDIX  H. 

in  his  possession  any  die,  plate  or  brand,  or  any  imita- 
tion of  the  trademark  of  any  person,  for  the  purpose  of 
making  any  counterfeit  or  imitation  of  any  description 
whatever  of  such  trademark,  or  of  selling  the  same  when 
made,  or  affixing  the  same  to  any  goods,  and  selling  or 
offering  the  same  for  sale  or  disposal  as  the  original 
goods  of  any  other  person,  and  every  person  who  so  uses 
or  sells  the  same,  or  who  fraudulently  uses  the  genuine 
trademark  of  another  with  intent  to  sell  or  offer  for  sale 
or  disposal,  any  goods  not  the  goods  of  the  person  to 
whom  such  trademark  properly  belongs,  as  genuine  and 
original,  is  guilty  of  a  misdemeanor. 
§  7258.     Every  person  who  either: 

1.  Uses  or  causes  to  be  used  any  brand,  mark,  name, 
print,  designation  or  description,  the  same  as  or  similar 
to  any  recorded  to  any  other  persons,  or  on  the  place  re- 
corded to  another;  or, 

2.  Uses  or  causes  to  be  used  any  second  hand  sacks, 
box,  barrel,  can,  package  or  other  article  on  which  ha^ 
been  placed  any  brand,  mark,  name,  print,  designation 
or  description,  the  property  of  another,  for  the  purposes 
of  deception  or  profit,  is  guilty  of  a  misdemeanor,  and 
upon  conviction  thereof  is  punishable  by  fine  of  not  less 
than  one  hundred  and  not  exceeding  one  thousand  dol- 
lars. 

§  7259.  Every  person  who  sells  or  keeps  for  sale  any 
goods  upon  which  any  counterfeit  trademark  has  been 
affixed,  and  intended  to  represent  such  goods  as  the  gen- 
uine goods  of  another,  knowing  the  same  to  be  counter- 
feited, is  guilty  of  a  misdemeanor. 

§  7260.  Every  person  who,  with  intent  to  defraud,  af- 
fixes or  causes  to  be  affixed  to  any  goods,  or  to  any  bot- 
tle, case,  box  or  other  package  containing  any  goods, 
any  description  of  label,  stamp,  brand,  imprint,  printed 
wrapper,  label  or  mark,  which  designates  such  goods 
by  any  word  or  token  which  is  wholly  or  in  part  the 
same  to  the  eye  or  to  ear  as  the  word  of  any  of  the 


STATE  TRADEMARK  STATUTES.  667 

words  or  tokens  used  by  any  other  person  as  his  trade- 
mark, and  every  person  who  knowingly  sells,  or  keeps, 
or  offers  for  sale  any  such  bottle,  case,  box,  or  other 
package  with  any  such  label,  stamp,  brand,  imprint, 
printed  wrapper,  ticket  or  mark  affixed  to,  or  upon  it,  in 
case  the  person  affixing  or  causing  to  be  affixed  such 
mark,  or  so  selling  or  exposing  or  offering  for  sale  such 
bottle,  case,  box,  or  other  package,  was  not  the  first  to 
employ  or  use  such  words  as  his  trademark,  is  guilty  of 
a  misdemeanor,  and  in  addition  to  the  punishment  \)tq- 
scribed  therefor  is  liable  to  the  party  aggrieved  in  the 
penal  sum  of  one  hundred  dollars  for  each  and  every  of- 
fense, to  be  recovered  by  him  in  a  civil  action. 

§7261.  The  words  "trademark,"  as  used  in  the  sec- 
tions preceding,  include  every  description  of  word,  let- 
ter, device,  emblem,  stamp,  imprint,  brand,  printed  tick- 
et, label,  or  wrapper  usually  affixed  by  any  mechanic, 
manufacturer,  druggist,  merchant,  or  tradesman  to  de- 
note any  goods  to  be  goods  imported,  manufactured,  pro- 
duced, compounded  or  sold  by  him,  other  than  any  name, 
word  or  expression  generally  denoting  any  goods  to  be 
of  some  particular  class  or  description. 

§7262.  The  word  "goods,"  as  used  in  the  sections 
preceding,  includes  every  kind  of  goods,  wares,  mer- 
chandise, compound  or  preparation,  which  may  be  law- 
fully kept  or  offered  for  sale. 

§  7263.  The  offense  of  affixing  a  false  trademark  to 
goods  is  equally  complete  within  the  meaning  of  sec- 
tions 7256,  7259  and  7260,  whether  such  mark  is  affixed 
to  the  goods  themselves  or  to  any  box,  bale,  barrel,  bot- 
tle, case,  cask,  wrapper  or  other  package  or  vessel,  or 
any  cover  or  stopper  thereof,  in  which  such  goods  are 
put  up. 

§§  7264,  7266  relate  to  protection  of  packages  of  manu- 
facturers and  bottlers  of  soda,  mineral  water,  and  other 
beverages. 


668  APPENDIX  H. 

OHIO. 
No  Registration  Statute. 

Bates'  Ann.  St..  1902. 

Section  7069.  Whoever  vends,  or  keeps  for  sale,  any 
goods,  merchandise,  mixture,  or  preparation  upon  which 
any  forged  or  counterfeit  stamp,  brand,  imprint,  wrajD- 
per,  label  or  trademark  is  placed  or  affixed,  and  intended 
to  represent  the  said  goods,  merchandise,  mixture  or 
preparation,  as  the  true  and  genuine  goods,  merchandise, 
mixture  or  preparation  of  any  other  person,  knowing 
the  same  to  be  counterfeit,  shall  be  fined  not  more  than 
one  hundred  dollars. 

Sec.  7096.  Whoever  willfully  forges  or  counterfeits 
any  representation,  likeness,  similitude,  copy  or  imita- 
tion of  the  private  brand,  wrapper,  label  or  trademark 
usually  affixed  by  any  person  to  or  upon  the  goods, 
wares,  merchandise,  preparation  or  mixture  of  such  per- 
son, or  by  any  maker  of  wine  from  grapes  grown  within 
this  state,  to  the  bottles  or  casks  used  by  him  to  contain 
the  same,  with  intent  to  pass  off  any  work,  goods,  manu- 
facture, wine,  compound,  preparation,  or  mixture,  to 
which  such  forged  or  counterfeit  representation,  like- 
ness, similitude,  copy  or  imitation  is  affixed,  or  intended 
to  be  affixed,  as  the  work,  goods,  manufacture,  wine,  com- 
pound, preparation  or  mixture  of  such  j^erson,  shall  be 
fined  not  more  than  five  hundred  dollars,  or  imprisoned 
not  more  than  twelve  months,  or  both. 

Sec.  7098.  Whoever  has  in  his  possession  any  die, 
plate,  brand,  engraving,  printed  label,  stamp,  imprint, 
wrapper,  or  trademark,  or  any  representation,  likeness, 
similitude,  copy,  or  imitation  thereof,  usually  affixed  by 
any  person  to  or  upon  articles  made,  manufactured,  pre- 
pared, or  compounded  by  him,  for  the  purpose  of  mak- 
ing impressions,  or  selling  the  same  when  made,  or  us- 


STATE  TRADEMARK  STATUTES.  669 

ing  the  same  upon  any  other  articles  made,  manufac- 
tured, prepared,  or  compounded,  and  passing  the  same 
off  upon  the  community  as  the  original  goods,  manufac- 
ture, preparation,  or  compound  of  any  other  person,  or 
so  in  fact  sells  or  uses  the  same,  (or)  wrongfully  and 
fraudulently  uses  the  genuine  stamp,  brand,  imprint, 
wrapper,  label,  or  trademark,  with  intent  to  pass  off  any 
goods,  wares,  merchandise,  mixture,  compound,  or  other 
article,  not  the  manufacture  of  the  person  to  whom  such 
stamp,  brand,  imprint,  wrapper,  label,  or  trademark 
properly  belongs,  as  genuine  and  original,  shall  be  fined 
not  more  than  five  hundred  dollars,  or  imprisoned  not 
more  than  twelve  months,  or  both. 

§§  4364-42  to  4364-44,  Laws  of  Ohio,  1902,  relate  to  the 
protection  of  packages  used  by  manufacturers,  bottlers 
and  vendors  of  soda  water,  mineral  water,  and  other  bev- 
erages, or  other  articles  of  merchandise,  medicines, 
compounds,  or  preparations. 

§§4364-55  to  4364-61  relate  to  timber  marks. 

§§4364-49  to  4364-53C  relate  to  the  marks  of  labor 
unions. 

§§  7069-1  and  7069-2  relate  to  the  false  marking  of  sil- 
verware. 


OKLAHOMA. 

Laws  1897,  Ch.  40. 
AN  ACT  to  provide  a  label  law  for  the  territory  of  Oklahoma. 

Section  1.  '^Mienever  any  person  or  any  association 
or  union  of  working-men  has  heretofore  adopted  or  used 
or  shall  hereafter  adopt  or  use  any  label,  trademark, 
term,  design,  device  or  form  of  advertisement  for  the 
purpose  of  designating,  making  known  or  distinguishing 
any  goods,  wares,  merchandise  or  other  product  of  labor, 
as  having  been  made,  manufactured,  produced,  prepared. 


670  APPENDIX  H. 

packed  or  put  on  sale  by  such  person  or  association  or 
union  of  workingmen,  or  by  a  member  or  members  of, 
such  association  or  union,  it  shall  be  unlawful  to  coun- 
terfeit or  imitate  such  label,  trademark,  term,  design,  de- 
vice or  form  of  advertisement,  or  to  use,  sell,  offer  for 
sale,  or  in  any  way  utter  or  circulate  any  counterfeit  or 
imitation  of  any  such  label,  trademark,  term,  design,  de- 
vice or  form  of  advertisement. 

Sec.  2.  Whoever  counterfeits  or  imitates  any  such 
label,  trademark,  term,  design,  device  or  form  of  adver- 
tisement, or  sells,  offers  for  sale  or  in  any  way  utters 
or  circulates  any  counterfeit  or  imitation  of  any  such 
label,  trademark,  term,  design,  device  or  form  of  adver- 
tisement, or  keeps  or  has  in  his  possession,  with  intent 
that  the  same  shall  be  sold  or  disposed  of,  any  goods, 
wares,  merchandise  or  other  product  of  labor  to  which 
or  on  which  any  such  counterfeit  or  imitation  is  printed, 
painted,  stamped  or  impressed,  or  knowingly  sells  or 
disposes  of  any  goods,  wares,  merchandise  or  other  prod- 
uct of  labor  contained  in  any  box,  case,  can  or  package 
to  which  or  on  which  any  such  counterfeit  or  imitation 
is  printed,  painted,  stamped  or  impressed,  or  knowingly 
sells  or  disposes  of  any  goods,  wares,  merchandise  or 
other  product  of  labor  contained  in  any  box,  case,  can  or 
package  to  which  or  on  which  any  such  counterfeit  or 
imitation  is  attached,  affixed  printed  or  painted,  stamped 
or  impressed,  or  keeps  or  has  in  his  possession,  with  in- 
tent that  the  same  shall  be  sold  or  disposed  of,  any 
goods,  wares,  merchandise  or  other  product  of  labor  in 
any  box,  case,  can  or  package  to  which  or  on  which  any 
such  counterfeit  or  imitation  is  attached,  affixed,  printed, 
painted,  stamped  or  impressed,  shall  be  punished  by  a 
fine  of  not  more  than  a  hundred  dollars,  or  by  imprison- 
ment for  not  more  than  three  months. 

Sec.  3.  Everj^  such  person,  association  or  union  that 
has  heretofore  adopted  or  used,  or  shall  hereafter  adopt 
or  use,  a  label,  trademark,  term,  design,  device  or  form 


STATE  TRADEMARK  STATUTES.  671 

of  advertisement,  as  provided  in  section  one  of  this  act, 
may  file  the  same  for  record  in  the  office  of  the  secre- 
tary of  the  territory  of  Oklahoma  by  leaving  two  copies, 
counterparts  or  fac  similes  thereof  with  said  secretary, 
and  by  filing  therewith  a  sworn  application  specifying 
the  name  or  names  of  the  person,  association  or  union 
on  whose  behalf  such  label,  trademark,  term,  design,  de- 
vice or  form  of  advertisement  shall  be  filed;  the  class 
of  merchandise  and  a  description  of  the  goods  to  which 
it  has  been  or  is  intended  to  be  appropriated,  stating 
that  the  party  so  filing,  or  on  whose  behalf  such  label, 
trademark,  term,  design,  device,  or  fonn  of  advertise- 
ment shall  be  filed,  has  the  right  to  the  use  of  the  same; 
that  no  other  person,  firm,  association,  union  or  corpor- 
ation has  the  right  to  such  use  either  in  the  identical 
form  or  in  any  such  near  resemblance  thereto  as  may 
be  calculated  to  deceive,  and  that  the  fac  similes  or  coun- 
teri^arts  filed  therewith  are  true  and  correct.  There  shall 
be  paid  for  such  filing  and  recording  a  fee  of  one  dollar. 

Said  secretary  shall  deliver  to  such  person,  associatiq-n 
or  union  so  filing  or  causing  to  be  filed  any  such  label, 
trademark,  teiTa,  design,  device  or  form  of  advertise- 
ment so  many  duly  attested  certificates  of  the  recording 
of  the  same  as  such  person,  association  or  union  may 
apply  for,  for  each  of  which  certificates  said  secretary 
shall  receive  a  fee  of  one  dollar.  Any  such  certificate  of 
record  shall,  in  all  suits  and  prosecutions  under  this  act, 
be  sufficient  proof  of  the  adoption  of  such  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement. 
Said  secretary  of  the  territory  shall  not  record  for  any 
person,  union  or  association  any  label,  trademark,  term, 
design,  device  or  form  of  advertisement  that  would  jn-ob- 
ably  be  mistaken  for  any  label,  trademark,  temi,  design, 
device  or  form  of  advertisement. 

Sec.  4.  Any  person  who  shall  for  himself,  or  on  be- 
half of  any  other  i>erson,  association  or  union,  procure 
the  filing  of  any  label,  trademark,  tenn,  design  or  form 


672  APPENDIX  H. 

of  advertisement  in  the  office  of  the  secretary  of  the  ter- 
ritory, under  the  provisions  of  this  act,  by  making  any 
false  or  fraudulent  representations  or  declarations,  ver- 
bally  or  in  writing,  or  by  any  fraudulent  means,  shall  be 
liable  to  pay  any  damages  sustained  in  consequence  of 
any  such  filing  to  be  recovered  by  or  on  behalf  of  the 
party  injured  thereby  in  any  court  having  jurisdiction, 
and  shall  be  punished  by  a  fine  not  exceeding  one  hun- 
dred dollars,  or  by  imprisonment  not  to  exceed  three 
months. 

Sec.  5.  Every  such  person,  association  or  union 
adopting  or  using  a  label,  trademark,  term,  device,  or 
form  of  advertisement  as  aforesaid  may  proceed  by  suit 
to  enjoin  the  manufacture,  use,  display  or  sale  of  any 
counterfeits  or  imitations  thereof,  and  all  courts  of  com- 
petent jurisdiction  shall  grant  injunctions  to  restrain 
such  manufacture,  use,  display  or  sale,  and  may  award 
the  complainant  in  any  such  suit,  damages  resulting 
from  such  manufacture,  use,  sale  or  display  as  may  be 
by  the  said  court  deemed  just  and  reasonable  and  shall 
require  the  defendants  to  pay  to  such  person,  associa- 
tions or  union  all  profits  derived  from  such  wrongful 
manufacture,  use,  display  or  sale,  and  such  court  shall 
also  order  that  all  counterfeits  or  imitations  in  the  pos- 
session or  under  the  control  of  any  defendant  in  such 
cause  be  delivered  to  an  officer  of  the  court  or  to  the 
complainant,  to  be  destroyed. 

Sec.  6.  Every  person  who  shall  use  or  display  the 
genuine  label,  trademark,  term,  design,  device  or  form 
of  advertisement  of  any  such  person,  association  or 
union,  in  any  manner  not  being  authorized  so  to  do  by 
such  person,  union  or  association,  shall  be  deemed  guilty 
of  a  misdemeanor,  and  shall  be  punished  by  imprison- 
ment for  not  more  than  three  months,  or  by  fine  of  not 
more  than  one  hundred  dollars.  In  all  cases  where  such 
association  or  union  is  not  incorporated,  suits  under  this 
act  may  be  commenced  and  prosecuted  by  an  officer  or 


STATE  TRADEMARK  STATUTES.  673 

member  of  such  association  or  union  on  behalf  of,  and 
for  the  use  of,  such  association  or  union. 

Sec.  7.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  person,  association  or 
union,  or  officer  thereof,  in  and  about  the  sale  of  goods 
or  otherwise,  not  being  authorized  to  so  use  the  same, 
shall  be  guilty  of  a  misdemeanor,  and  shall  be  punished 
by  imprisonment  for  not  more  than  three  months,  or 
by  a  fine  of  not  more  than  one  hundred  dollars. 

Sec.  8.  This  act  shall  take  effect  and  be  in  force  from 
and  after  its  passage  and  approval. 

Approved  March  11,  1897. 

Chap.  49  of  the  Session  Laws  of  1895  relates  to  the 
protection  of  the  packages  of  manufacturers  and  dealers 
in  carbonated  goods,  soda  waters  and  other  beverages. 


OREGON. 

Bellinger  and  Cotton's  Annotated  Codes  and  Statutes,  Ch.  V. 

Trademakks. 

Sec.  4609.  Exclusive  Use  of  Trademark,  Hoiv  Se^ 
cured.— Any  person,  partnership,  firm,  or  private  cor- 
poration desiring  to  secure  within  this  state  the  exclu- 
sive use  of  any  name,  mark,  brand,  designation,  or  de- 
scription for  any  article  of  manufacture  or  trade,  or  for 
any  mill,  hotel,  factory,  machine  shop  or  other  place  of 
business,  shall  deliver  or  cause  to  be  delivered  to  the 
secretary  of  state  a  particular  description  or  a  fac  simile 
of  such  mark,  brand,  name,  designation,  or  description 
as  he  may  desire  to  use. 

Sec.  4610.  Secretary  of  State  to  Record  Trademarlcs. 
—If  there  be  not  already  a  claim  filed  with  the  Secretary 
of  State  for  the  same  or  a  similar  name,  mark,  brand, 
designation,  or  description,  he  shall  immediately  record 

43 


674  APPENDIX  H. 

tlie  one  furnished  in  a  book  to  be  specially  provided  and 
kept  by  bim  for  such  purpose,  which  book  shall  be  at  all 
times  subject  to  public  inspection  and  examination.  If 
there  be  already  filed  the  same  or  a  similar  brand,  mark, 
designation,  or  description,  the  secretary  shall  so  inform 
the  applicant,  and  shall  not  record  the  same. 

Sec.  4611.  Penalty  for  Infringement.— Any  person, 
partnership,  firm,  or  corporation  that  shall  use  or  cause 
to  be  used  any  name,  mark,  brand,  designation,  or  de- 
scription the  same  as  or  similar  to  one  so  secured  or 
recorded,  for  the  purpose  of  deception  or  profit,  shall 
forfeit  to  the  use  of  the  owner  of  the  name,  mark,  brand, 
designation,  or  description  so  taken  or  imitated  one-half 
of  the  propertj^  goods,  or  articles  of  trade  upon  which 
the  same  may  be  used  or  placed,  or  the  value  thereof,  to 
Idc  recovered  by  the  said  owner  in  any  court  having  ju- 
risdiction of  the  subject-matter. 

Sec.  4612.  Penalty  for  Second  Infringement.— Any 
person,  j^artnership,  firm,  or  private  corporation  that 
shall  use  any  such  mark,  brand,  name,  designation,  or 
description  a  second  or  greater  number  of  times  shall 
forfeit  the  whole  of  the  property  or  article  upon  which 
the  same  is  placed  or  used,  or  the  value  thereof,  to  be 
recovered  in  the  manner  provided  in  the  preceding  sec- 
tion. 

Sec.  4613.  Penalty  for  Using  Boxes,  etc.,  with  An- 
other's Trademark.— Anj  person,  partnership,  firm,  or 
private  corporation  that  shall  use  or  cause  to  be  used 
any  second  hand  sack,  box,  barrel,  can,  package,  or  other 
article  on  which  has  been  placed  any  name,  mark,  brand, 
designation,  or  description,  the  property  of  another,  for 
the  purpose  of  deception,  shall  be  liable  to  the  same  for- 
feiture of  the  property  inclosed  therein  as  is  provided 
in  sections  4611  and  4612. 

Sec.  4614.  Importing  Goods  with  Another's  Trade- 
mark Thereon.— If  any  goods,  wares,  merchandise,  or 
other  articles  shall  be  imported  into  this  state  on  which 


STATE  TRADEMARK  STATUTES. 


6To 


shall  be  used,  for  the  purpose  of  deception,  the  same  or 
any  similar  mark,  name,  brand,  designation  or  descrip- 
tion as  may  have  been  secured  under  the  provisions  of 
this  chapter,  said  goods,  wares,  merchandise,  or  other 
articles  shall  be  forfeited  to  the  use  of  the  party  injured, 
as  provided  in  sections  4611  and  4612. 

Sec.  4615.  Fee  for  Recording  Trademark.— A  fee  of 
two  dollars  and  a  half  shall  be  paid  to  the  Secretary  of 
State  by  the  owner  of  said  trademark  as  pay  for  record- 
ing. 

Sec.  4616.  Right  to  Enjoin  Infringement  Continues. 
—Nothing  in  this  act  shall  be  construed  so  as  to  affect 
the  power  of  courts  of  equity  to  perpetually  restrain  by 
injunction  the  improper  use  of  any  mark,  brand,  name, 
description,  or  designation  which  may  have  been  secured 
by  the  provisions  of  this  chapter. 


RULES  OF  THE  DEPARTMENT  OF  STATE 

REGULATING   THE 

REGISTRulTION    OF    TRADEMARKS. 

In  order  to  secure,  within  the  State  of  Oregon,  the  reg- 
istration of  a  brand,  label,  mark,  name,  word,  word-sym- 
bol, 2)hrase  or  designation  as  a  trademark,  it  is  neces- 
sary to  make  out  a  formal  application  addressed  to  the 
Secretary  of  State  setting  forth  that  some  individual 
firm,  partnership,  or  corporation,  doing  business  at  a 
designated  place,  desires  to  secure  within  the  state  of 
Oregon  the  sole  and  exclusive  use  as  a  trademark  of 
some  particularly  described  brand,  label,  mark,  name, 
word,  word-symbol,  phrase  or  designation,  for  use  in 
some  designated  manner  on  some  stated  class  of  goods, 
wares,  or  merchandise,  and  that  the  individual  finn, 
partnership,  or  corporation,  making  the  application  is 
the  original  user  and  originator  of  the  same,  and  that 


676  APPENDIX  H. 

by  reason  of  being  the  original  user  claims  within  the 
State  of  Oregon  the  right  to  the  sole  and  exclusive  use. 

This  api^lication  should  be  signed  and  attached  to  it, 
either  as  part  of  the  application  or  as  an  exhibit,  should 
be  one  facsimile  of  the  brand,  label,  mark,  name,  word, 
word-symbol,  phrase  or  designation  desired  to  be  trade- 
marked.  Enclosed  with  the  application  should  be  an 
extra  facsimile  printed,'  impressed  or  made  upon  thin 
durable  paper  for  attaching  in  the  book  of  records  of 
trademarks.  With  each  application  should  be  enclosed 
the  fee  allowed  by  law  of  $2.50. 

After  the  application  is  received  at  the  office  of  the 
Secretary  of  State  an  examination  of  all  the  records  of 
all  trademarks  which  have  heretofore  been  filed,  must 
be  made  to  ascertain  whether  or  not  the  design  desired 
to  be  registered  will  conflict  with  anj^thing  already  regis- 
tered. If,  after  such  search  has  been  made,  it  is  found 
not  to  conflict  with  anything  previously  registered,  the 
application  is  immediately  filed  and  from  that  time  the 
sole  and  exclusive  use  is  awarded  to  the  applicant. 


FORM   OF  APPLICATION   FOR   REGISTRATION. 

Application  to  register — a(a) As  a  trademark   in  the   State 

of  Oregon,  for  (b)  

,  190—. 

To  F.  I.  Dunbar,  Secretary  of  State. 

(c)  ,   (d)  ,  desiring  to  secure  within  the  State  of  Ore- 
gon the  sole  and  exclusive  use  of  a  (a)  for  use  upon  (b) 


In  accordance  with  the  provisions  of  Chapter  V,  Title  XXXVIII,  Bell- 
inger and  Cotton's  Annotated  Codes  and  Statutes   of  Oregon,  hereby 

presents  this  application  for  the  registration  of  the  (a) , described 

as  follows:  a  fac  simile  of  which  is  marked  "Exhibit  A," 

hereto  attached.    This  (a)  as  shown  in  the  exhibit  is  to  be  used 

upon  (b)  ,  (e)  said  above  named  

And  by  reason   of  being  the  originator  and   original   user  of  the 

(a)  herein  described  and  shown  in  the  exhibit  hereto  attached, 

the  said  hereby  claims  the  right  to  the  sole  and  exclusive  use 

of   the  same  within  the   State  of  Oregon   for  the  uses  and   purposes 
herein  stated. 


STATE   TRADEMARK    STATUTES.  677 

(a)  Insert  whether  name,  mark,  brand,  designation  or  description. 

(b)  Insert  name  of  article,  or  place  of  business; 

(c)  Insert  name  of   person,  firm,  or  corporation; 

(d)  Insert   whether   partnership,   firm,   or  corporation; 

(e)  Insert  manufactured  and  sold,  or  place  of  business,  as  the  case 
may  be. 

Inclosed  with  the  application  should  be  an  extra  fac  simile  printed, 
impressed,  or  made  upon  thin,  durable  paper  for  attaching  in  the  book 
of  Records  of  Trademarks. 


PENNSYLVANIA. 

Act  of  April  24,  1905. 

No.    210. 

AN  ACT  amending  the  third  section  of  the  act,  entitled  "An  act  to 
provide  for  the  registration  of  labels,  trademarks,  tradenames, 
stamps,  designs,  devices,  shopmarks,  terms,  brands,  designations, 
descriptions,  or  forms  of  advertisement,  and  protect  and  secure  the 
rights,  property  and  interest  therein  of  the  persons,  copartnerships 
or  corporations  adopting  and  filing  the  same,  and  providing  penal- 
ties for  the  violations  of  the  act,"  approved  the  twentieth  day  of 
June,  Anno  Domini  one  thousand  nine  hundred  and  one;  so  as 
to  further  protect  and  secure  the  rights,  property  and  interest  of 
persons,  corporations  or  copartnerships  adopting  and  registering 
said  labels,  trademarks,  tradenames,  stamps,  designs,  devices,  shop- 
marks,  terms,  brands,  designations,  descriptions  or  form  of  adver- 
tisement. 

Section  1.  Be  it  enacted,  &:c.,  That  the  third  section 
of  the  act,  entitled  *'An  act  to  provide  for  the  regis- 
tration of  labels,  trademarks,  tradenames,  stamps,  de- 
signs, devices,  shopmarks,  terms,  brands,  designations, 
descriptions  or  forms  of  advertisement,  and  protect  and 
secure  the  rights,  property  and  interest  therein  of  the 
persons,  copartnerships  or  corporations  adopting  and 
filing  the  same,  and  providing  penalties  for  the  viola- 
tion of  the  act,"  approved  the  twentieth  day  of  June, 
Anno  Domini  one  thousand  nine  hundred  and  one,  which 
reads  as  follows: 

'*Sec.  3.  That  whenever  person  or  persons,  copart- 
nership or  corporations,  has  heretofore  adopted  and  filed 


678  APPENDIX  H. 

for  record  or  registry,  or  shall  hereafter  adopt  and  file 
for  registry,  any  label,  trademak,  tradename,  device, 
shopmark,  designation,  or  fonn  of  advertisement,  as 
herein  provided,  it  shall  be  unlawful,  and  a  violation 
of  this  act,  for  any  other  person,  copartnership  or  corpo- 
ration to  make  any  use,  sale,  offer  for  sale,  or  display 
of  the  genuine  label,  trademark,  tradename,  device,  shop- 
mark,  designation,  or  form  of  advertisement,  or  any 
such  likeness  or  imitation  thereof  as  shall  be  calculated 
or  liable  to  deceive,  of  any  such  person  or  persons, 
cof)artnership  or  corporations,  filing  the  same ;  or  to  sell, 
offer  to  sell,  or  dispose  of,  any  goods,  wares  or  mer- 
chandise, in  bulk,  or  in  any  box,  case,  can,  bottle  or 
package  to  or  which  any  such  genuine  label,  trademark, 
tradename,  device,  shopmark,  designation,  or  form  of 
advertisement,  filed  for  record  as  aforesaid,  or  any  such 
likeness  or  imitation  thereof,  is  attached,  affixed  or  dis- 
played; or  to  make  any  wrongful  use  whatever  of  any 
such  genuine  label,  trademark,  tradename,  device,  shop- 
mark,  designation,  or  form  of  advertisement,  or  any 
such  likeness  or  imitation  thereof;  or  to  in  any  way  use 
the  name  or  seal  of  any  such  person  or  persons,  copart- 
nership or  corporation,  or  any  such  likeness  or  imitation 
thereof,  in  and  about  the  sale  of  goods  or  otherwise, 
without  first  obtaining  in  every  such  case  the  license, 
consent  or  authority  of  the  person  or  persons  copartner- 
ship or  corporation,  adopting,  filing  and  registering  the 
same;  and  it  shall  be  unlawful  for  anj^  other  person  or 
persons,  firm,  copartnership,  or  corporation  to  make  any 
use  of  such  label,  trademark,  tradenames,  device,  shop- 
mark,  designation,  or  form  of  advertisement,  so  filed, 
or  any  such  likeness  or  imitation  thereof,  or  utter  or 
display  the  same  orally  or  in  any  printed  or  written 
form  in  the  conduct  of  his  business  or  in  any  business 
transaction,  attached  to  merchandise  or  products  of 
labor,  or  detached  from  and  independent  of  the  same, 
on  invoice,  letter-heads,  bills  or  advertisements,  without 


STATE  TRADEMARK  STATUTES.  679 

express  consent,  license  and  authority  of  the  jjcrson  or 
jjersons,  copartnership  or  corporation,  so  filing  the 
same;  and  any  such  license,  consent  or  authority  may 
be  revoked  and  terminated  at  any  time,  upon  notice, 
'and  thereafter  any  use  tliereof  shall  be  a  violation  of 
this  act,  and  subject  those  violating  the  same  to  all  the 
liabilities  and  penalties  herein  provided  against  any 
violation  thereof.  He  shall  refuse  to  file  or  register 
any  label,  trademark,  tradename,  device,  shopmark, 
designation,  or  form  of  advertisement,  identical  with, 
or  so  similar  to  as  to  be  calculated  or  liable  to  deceive, 
any  label,  trademark,  tradename,  device,  shopmark, 
designation,  or  form  of  advertisement,  filed  or  registered, 
unless  it  shall  be  proved  to  his  satisfaction  that  the 
person  or  persons,  copartnership  or  corporation,  lastly 
applying  for  the  registry  of  such  label,  trademark,  trade- 
names, device,  shopmark,  designation,  or  form  of  ad- 
vertisement, shall  be  entitled  thereto,  and  the  owner 
thereof  by  right  of  prior  adoption;  in  which  case  the 
date  of  adoption  shall  determine  the  ownership,  and 
shall  be  proved  by  affidavits  of  persons  conversant  with 
such  dates.  In  the  case  the  Secretary  of  the  State  be- 
comes satisfied,  after  hearing  the  said  affidavits,  that 
the  person  or  persons,  copartnership  or  corporation,  last 
applying  for  registr^'^  is  entitled  to  priority  of  adoption 
to  register  such  trademark,  tradename,  device,  shop- 
mark,  designation,  or  for  mof  advertisement,  he  shall 
revoke  the  first  registry  thereof,  and  re-register  the  same 
in  the  name  of  said  applying  person  or  persons,  co- 
partnership or  corporations,"  be  and  the  same  is  hereby 
amended  so  as  to  read  as  follows: 

Sec.  3.  That  whenever  person  or  persons,  copartner- 
ship or  corporations,  has  heretofore  adopted  and  filed 
for  record  or  registry,  or  shall  hereafter  adopt  and  file 
for  registry'-,  any  label,  trademark,  tradename,  device, 
shopmark,  designation,  or  form  of  advertisement,  as 
herein  provided,  it  shall  be  unlawful  and  a  violation  of 


680  APPENDIX  H. 

this  act  for  any  other  person,  copartnership,  or  corpora- 
tion to  make  any  use,  sale,  offer  for  sale,  or  display  of  the 
genuine  label,  trademark,  tradename,  device,  shopmark, 
designation,  or  form  of  advertisement,  or  any  such  like- 
ness or  imitation  thereof  as  shall  be  calculated  or  liable 
to  deceive,  of  any  such  person  or  persons,  copartner- 
ship or  corporations,  filing  the  same;  or  to  sell,  offer 
to  sell,  or  dispose  of  any  goods,  wares,  or  merchandise, 
in  bulk,  or  in  box,  case,  can,  bottle  or  package  to  or 
which  any  genuine  label,  trademark,  tradename,  device, 
shopmark,  designation,  or  form  of  advertisement,  filed 
for  record  as  aforesaid,  or  any  such  likeness  or  imita-i 
tion  thereof,  is  attached ;  affixed  or  displayed ;  or  to  make 
any  wrongful  use  whatever  of  any  such  genuine  label, 
trademark,  tradename,  device,  shopmark,  designation,  or 
fonn  of  advertisement,  or  any  such  likeness  or  imitation 
thereof;  or  to,  in  any  way,  use  the  name  or  seal  of  any 
such  person  or  persons,  corpartnership  or  corporation, 
or  any  other  likeness  or  imitation  thereof,  in  and  about 
the  sale  of  goods,  or  otherwise,  without  first  obtaining, 
in  eveiy  such  case,  the  license,  consent  or  authority  of 
the  person  or  persons,  copartnership  or  corporation, 
adopting,  filing  and  registering  the  same;  and  it  shall  be, 
unlawful  for  any  other  person  or  persons,  firm,  copart- 
nership, or  corporation  to  remove  any  such  label,  trade- 
mark, tradename,  device,  shopmark,  designation,  or  form 
of  advertisement,  so  registered  as  aforesaid  and  attached, 
to  merchandise  or  products  of  labor,  for  the  purpose  of 
using  such  merchandise  or  products  of  labor  as  a  pat- 
tern for  the  reproduction  of  the  same:  Provided  how- 
ever. That  nothing  herein  contained  shall  be  taken  to 
prohibit  the  using  of  such  merchandise  or  products  of 
labor  as  a  pattern  for  the  reproduction  of  the  same,  in 
individual  cases  of  emergency  repair.  And  it  shall  be 
unlaivfid  for  any  other  person  or  persons,  firm,  copart- 
nership, or  corporation  to  make  any  use  of  such  label, 
trademark,  tradename,  device,  shopmark,  designation,  or 


STATE  TRADEMARK  STATUTES.  681 

form  of  advertisement,  so  filed,  or  any  such  likeness  or 
imitation  thereof,  or  utter  or  display  the  same  orally  or 
in  any  jDrinted  or  written  fonn  in  the  conduct  of  his 
business  or  in  any  business  transaction,  attached  to  mer- 
chandise or  products  of  labor,  or  detached  from  and  in- 
dependent of  the  same,  on  invoice,  letter-heads,  bills,  or 
advertisements,  without  express  consent,  license  and  au- 
thority of  the  person  or  persons,  copartnership  or  corpo- 
ration, so  filing  the  same;  and  any  such  license,  consent 
or  authority  may  be  revoked  and  terminated  at  any  time, 
upon  notice,  and  thereafter  any  use  thereof  shall  be  a 
violation  of  this  act,  and  subject  those  violating  the  same 
to  all  the  liabilities  and  penalties  herein  provided  against 
any  violation  thereof.  He  shall  refuse  to  file  or  register 
any  label,  trademark,  tradename,  device,  shopmark, 
designation,  or  form  of  advertisement,  identical  with,  or 
so  similar  to  as  to  be  calculated  or  liable  to  deceive,  any 
label,  trademark,  tradename,  device,  shopmark,  designa- 
tion, or  form  of  advertisement,  filed  or  registered,  unless 
it  shall  be  proved  to  his  satisfaction  that  the  person  or 
jiersons,  copartnership  or  coii:»oration,  lastly  applying) 
for  the  registry  of  such  label,  trademark,  tradename,  de- 
vice, shopmark,  designation,  or  form  of  advertisement, 
shall  be  entitled  thereto,  and  the  owner  thereof  by  right 
of  prior  adoption;  in  which  case  the  date  of  adoption 
shall  determine  the  ownership,  and  shall  be  proved  by 
affidavits  of  persons  conversant  with  such  dates.  In  the 
case  the  Secretary  of  State  becomes  satisfied,  after  hear- 
ing the  said  affidavits,  that  the  person  or  persons,  copart- 
nership or  corporation,  last  applying  for  registry  is  en- 
titled to  priority  of  adoption  to  register  such  trademark, 
tradename,  device,  shopmark,  designation,  or  form  of 
advertisement,  he  shall  revoke  the  first  registry  thereof, 
and  re-register  the  same  in  the  name  of  said  applying 
person  or  persons,  copartnership  or  cor]iorations. 


682  APPENDIX  H. 

FORM  OF  APPLICATION   FOR   REGISTRATION 

To  the  Secretary  of  the  Commonwealth  of  Pennsylvania: 

SIR: — In  compliance  with  the  requirements  of  an  Act  of  the  Gen- 
eral Assembly  of  the  Commonwealth  of  Pennsylvania  entitled  "An 
Act  to  provide  for  the  registration  of  labels,  trademarks,  tradenames, 
stamps,  designs,  devices,  shopmarks,  terms,  brands,  designations,  de- 
scriptions or  forms  of  advertisement,  and  protect  and  secure  the  rights, 
property  and  interest  therein  of  the  persons,  copartnerships  or  corpora- 
tions adopting  and  filing  the  same,  and  providing  penalties  for  the 
violations  of  the  act,"  approved  the  20th  day  of  June,  A.  D.  1901,  the 

undersigned,  resident  or  doing  business  in  the  United  States, 

having  heretofore  adopted  or  used,  or  desiring  to  adopt  or  use  a 

for  the  purposes  provided  in  said  act,  and  desiring  to  file  the  same  for 
record  in  the  office  of  the  Secretary  of  State  of  the  State  of  Pennsyl- 
vania, do  hereby  certify: 

1st.  The  name  of  the  person  or  persons,  copartnership  or  corpora- 
tion so  filing,  is 

(If  a  corporation  give  name  of  State  under  which  organized.) 

2d.     His  or  its  residence,  location  or  place  of  business  

3d.  The  class  of  merchandise,  and  the  particular  description  of 
goods  comprised  therein 

The   trademark   consists   of   

4th.  The  class  to  which  it  has  been  or  is  intended  to  be  appro- 
priated   

5th.     The   length   of  time,    if   any,    during   which   it  has   been   in 

use  


—  /    **•  Signature  of  Applicant. 


State  of  — 
County  of 

Personally  appeared   before  me,  this  day  of  ,  A.  D. 

190 — ,  who  being  duly  sworn,  according  to  law,  deposes  and  says  that 
the  statements  contained  in  the  foregoing  instrument  are  true;    that 

the so  filing  such  ,  has  a  right  to  use  the  same,  and  that 

no  other  person  or  persons,  copartnership  or  corporation,  has  the  right 
to  such  use,  either  in  the  identical  form  or  in  any  such  near  resem- 
blance thereto  as  may  be  calculated  to  deceive,  and  that  the  fac-similes, 
copies  or  counterparts  filed  herewith  are  true  and  correct. 

Sworn  and  subscribed  before  \ 
me,  the  day  and  year  aforesaid,  j 

Note. — Two  copies,  counterparts  or  fac-similes  of  the  trademark 
must  be  filed  with  this  application.  Fee  for  filing  and  certificate,  two 
dollars. 


STATE  TRADEMARK  STATUTES.  683 


RHODE  ISLAND. 

Public  Laws  of  1900-1.  Cii.  735. 

AN  ACT  for  the  protection  of  labels  and  seals  of  labor  organizations, 
associations,  and  societies  in  the  state  of  Rhode  Island  and  Provi- 
dence Plantations. 

Section  1.  Whenever  any  person,  or  any  association 
or  union  of  worldng^nien,  has  heretofore  adopted  or  used, 
or  shall  hereafter  adopt  or  use,  any  label,  trademark, 
term,  design,  device,  or  form  of  advertisement  for  the 
purpose  of  designating,  making  known,  or  distinguishing 
any  goods,  wares,  merchandise,  or  other  product  of  labor 
as  having  been  made,  manufactured,  produced,  prepared, 
packed,  or  put  on  sale  by  such  i3erson,  or  association  or 
union  of  workingmen,  or  by  a  member,  or  members,  of 
such  association  or  union,  it  shall  be  unlawful  to  coun- 
terfeit or  imitate  such  label,  trademark,  tenn,  design,  de- 
vice, or  form  of  advertisement,  or  to  use,  sell,  offer  for 
sale,  or  in  any  way  utter  or  circulate  any  counterfeit 
or  imitation  of  any  such  label,  trademark,  term,  design, 
device,  or  form  of  advertisement. 

Sec.  2.  Whoever  knowingly  counterfeits  or  imitates 
any  such  label,  trademark,  term,  design,  device,  or  form 
of  advertisement  which  has  been  filed  and  recorded  in 
the  office  of  the  Secretary  of  State  as  hereinafter  pro- 
vided ;  or  knowingly  sells,  offers  for  sale,  or  in  any  way 
utters  or  circulates  any  counterfeit  or  imitation  of  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement ;  or  knowingly  keeps  or  has  in  his  posses- 
sion, with  intent  that  the  same  shall  be  sold  or  disposed 
of,  any  goods,  wares,  merchandise,  or  other  product  of 
labor  to  which  or  on  which  any  such  counterfeit  or  imi- 
tation is  printed,  painted,  stamped,  or  impressed;  or 
knowingly  sells  or  disposes  of  any  goods,  wares,  mer- 
chandise,  or  other  product  of  labor  contained  in  any 


684  APPENDIX  H. 

box,  case,  can,  or  package  to  which  or  on  which  any 
such  counterfeit  or  imitation  is  attached,  affixed,  printed, 
painted,  stamped,  or  impressed;  or  knowingly  keeps  or 
has  in  his  possession  with  intent  that  the  same  shall 
be  sold  or  disposed  of,  any  goods,  wares,  merchandise, 
or  other  product  of  labor  in  any  box,  case,  can,  or  pack- 
age to  which  or  on  which  any  such  counterfeit  or  imi- 
tation is  attached,  affixed,  printed,  painted,  stamped,  or 
impressed,  shall  be  j^unished  by  a  fine  of  not  more  than 
one  hundred  dollars  or  by  imprisonment  for  not  more 
than  three  months. 

Sec.  3.  Every  such  person,  association,  or  union  that 
has  heretofore  adopted  or  used,  or  shall  hereafter  adopt 
or  use,  a  label,  trademark,  term,  design,  device  or  form 
of  advertisement  as  provided  in  section  1  of  this  act,  shall 
file  the  same  for  record  in  the  office  of  the  Secretary  of 
State  by  leaving  two  copies,  counterparts,  or  facsimiles 
thereof,  with  said  secretary,  and  by  filing  therewith  a 
sworn  application  sioecifying  the  name  or  names  of  the 
person,  association,  or  union  on  whose  behalf  such  label, 
trademark,  term,  design,  device,  or  form  of  advertise- 
ment shall  be  filed;  the  class  of  merchandise,  and  a 
description  of  the  goods  to  which  it  has  been  or  is  in- 
tended to  be  appropriated,  stating  that  the  party  so  fil- 
ing, or  on  whose  behalf  such  label,  trademark,  term,  de- 
sign, device,  or  form  of  advertisement  shall  be  filed,  has 
the  right  to  the  use  of  the  same,  that  no  other  person, 
firm,  association,  union,  or  corporation  has  the  right  to 
such  use,  either  in  the  identical  form  or  in  any  such 
near  resemblance  thereto  as  may  be  calculated  to  de- 
ceive, and  that  the  facsimile  or  counterparts  filed  there- 
with are  true  and  correct,  before  there  shall  be  any  lia- 
bility to  any  suit  or  proceeding  for  any  violation  of  this 
act.  There  shall  be  paid  for  such  filing  and  recording  a 
fee  of  one  dollar.  Said  secretary  of  state  shall  cause  a 
description  of  such  label,  trademark,  term,  design,  de- 
vice, or  form  of  advertisement  to  be  published  once  a 


STATE  TRADEMARK  STATUTES.  685 

week  for  three  successive  weeks,  at  the  expense  of  the 
applicant,  in  some  newspaper  published  in  the  city  of 
rrovidence.  After  such  publication  said  secretary  shall 
deliver  to  such  person,  association,  or  union  so  filing  or 
causing  to  be  filed  any  such  label,  trademark,  term,  de- 
sign, device  or  form  of  advertisement  so  many  duly  at- 
tested certificates  of  the  recording  of  the  same  as  such 
person,  association,  or  union  may  apply  for,  for  each 
of  which  certificates  said  secretary  shall  receive  a  fee  of 
one  dollar.  Any  such  certificate  of  record  shall  in  suits 
and  prosecutions  under  this  act  be  sufficient  proof  of  the 
adoption  of  such  label,  trademark,  term,  design,  device, 
or  form  of  advertisement.  Said  secretary  of  state  shall 
not  record  for  any  person,  union,  or  association  any 
label,  trademark,  term,  design,  device,  or  form  of  adver- 
tisement that  would  probably  be  mistaken  for  any  label, 
trademark,  term,  design,  device,  or  form  of  advertise- 
ment theretofore  filed  by  or  on  behalf  of  any  other 
person,  union,  or  association. 

Sec.  4.  Any  person  who  shall,  for  himself  or  on  be- 
half of  any  other  person,  association,  or  union,  procure 
the  filing  of  any  label,  trademark,  term,  design,  or  form 
of  advertisement  in  the  office  of  the  secretary  of  state 
under  the  provisions  of  this  act  by  making  any  false  or 
fraudulent  representations  or  declarations,  verbally  or 
in  writing,  or  by  any  fraudulent  means,  shall  be  liable 
to  pay  any  damages  sustained  in  consequence  of  any 
such  filing,  to  be  recovered  by  or  on  behalf  of  the  party 
injured  thereby  in  any  court  haying  jurisdiction,  and 
shall  be  punished  by  a  fine  not  exceeding  one  hundred 
dollars,  or  by  imprisonment  not  exceeding  three  months. 
In  any  suit  or  prosecution  under  the  provisions  of  this 
act,  the  defendant  may  show  that  he  or  it  was  the  owner 
of  such  label,  trademark,  term,  design,  device,  or  form 
of  advertisement  prior  to  its  being  filed  under  the  pro- 
i^isions  of  this  act,  and  that  it  had  been  filed  wrong- 


6SG  APPENDIX  H. 

fully  or  without  right  by  some  other  person,  association 
or  union. 

See.  5.  Every  such  person,  association,  or  union 
adopting  or  using  a  label,  trademark,  term,  design,  de- 
vice, or  form  of  advertisement,  as  aforesaid,  may  pro- 
ceed by  suit  to  enjoin  the  manufacture,  use,  display,  or 
sale  of  any  counterfeits  or  imitations  thereof,  and  all 
courts  of  competent  jurisdiction  may  grant  injunctions 
to  restrain  such  manufacture,  use,  display,  or  sale,  and 
may  award  the  complainant  in  any  such  suit  damages 
resulting  from  such  manufacture,  use,  sale,  or  display, 
as  may  be  by  the  said  court  deemed  just  and  reasonable, 
and  may  require  the  defendants  to  pay  such  person, 
association  or  union  all  profits  derived  from  such  wrong- 
ful manufacture,  use,  display,  or  sale;  and  such  court 
may  also  order  that  all  such  counterfeits  or  imitations 
in  the  possession  or  under  the  control  of  any  defendant 
in  such  cause  be  delivered  to  an  officer  of  the  court,  or 
to  the  complainant,  to  be  destroyed. 

In  all  cases  where  such  association  or  union  is  not 
incorporated,  suits  under  this  act  may  be  commenced 
and  prosecuted  by  an  officer  or  member  of  such  associa- 
tion or  union,  on  behalf  of  and  for  the  use  of  such  asso- 
ciation or  union. 

Sec.  6.  Any  person  or  persons  who  shall  in  any  way 
use  the  name  or  seal  of  any  such  j^erson,  association,  or 
union,  or  officer  thereof,  in  and  about  the  sale  of  goods 
or  otherwise,  not  being  authorized  to  use  the  same,  shall 
be  guilty  of  a  misdemeanor,  and  shall  be  punished  by 
imprisonment  for  not  more  than  three  months  or  by  fine 
of  not  more  than  one  hundred  dollars. 

Sec.  7.  The  provisions  of  this  act  shall  not  abridge 
any  rights  to  any  trademarks  existing  at  the  time  of  the 
passage  of  this  act,  whether  the  same  shall  be  recorded 
or  not,  nor  any  remedies  or  rights  of  action  otherwise 
or  theretofore  existing  in  favor  of  owners  of  trade- 
marks. 


STATE  TRADEMARK  STATUTES.  687 

Sec.  8.  The  district  courts  of  the  several  judicial  dis- 
tricts shall  have  jurisdiction  of  all  comijlaints  for  viola- 
tion of  this  act. 

Sec.  9.  This  act  shall  take  effect  and  be  in  force  from 
and  after  the  first  day  of  June,  A.  D.  1900,  and  all  acts 
and  parts  of  acts  inconsistent  herewith  are  hereby  re- 
pealed. 

Chapter  627,  Pub.  Laws  1898-1899  relates  to  the  pro- 
tection of  bottles,  barrels,  kegs,  casks,  cans,  etc.,  of  manu- 
facturers, bottlers,  and  vendors  of  soda  water,  mineral 
water,  ale,  beer,  or  other  liquids  that  may  be  used  as 
foods  or  beverages,  or  medicines,  perfumery,  oils,  com- 
pounds, etc. 


FORM  OF  APPLICATION  FOR  REGISTRATION. 

Application  accompanying  a (Insert  Label,  Trademark,  Term, 

Design,  Device,  or  Form  of  Advertisement  as  the  case  may  be)  filed  in 
accordance  with  the  provisions  of  Chapter  735  of  the  Public  Laws, 
passed  April  12,  1900,  entitled  "An  Act  for  the  Protection  of  Labels 
and  Seals  of  Labor  Organizations,  Associations  and  Societies  in  the 
State  of  Rhode  Island  and  Providence  Plantations." 

Name  of  Person,  Association  or  Union  

Class  of  merchandise  and  description  of  the  goods  to  which  the 
(Insert  Label,  Trademark,  Term,  Device,  or  Form  of  Advertise- 


ment, as  the  case  may  be)  has  been  or  is  intended  to  be  appropriated, 


do  hereby  declare,  in  accordance  with  the  provisions  of  said 


Chapter  735  of  the  Public  Laws,  that  ha —  a  right  to  the  use 

of   the  same referred   to   in   the  foregoing  application,  that  no 

other  person,  firm,  association,  union  or  corporation  has  the  right  to 
such  use,  either  in  the  identical  form  or  in  any  such  near  resemblance 
thereto  as  may  be  calculated  to  deceive,  and  that  the  fac  simile  or 
counterparts  filed  therewith  are  true  and  correct. 

In  Witness  Whereof,  I  have  hereunto  signed  my  name  this  

-day  of in  the  year  nineteen  hundred  

(Sign  here.) 


688  APPENDIX  H. 

State  of  Rhode   Island,  etc. 

sc.  ISO- 
Then  personally  appeared  the  above-named  and  made  oath 

that  the  foregoing  declaration  by  him  subscribed  is  true  and  correct. 

Before  me. 


Notary  Public. 


SOUTH  CAEOLINA. 

No  Registration  Law. 

The  Laws  of  1902,  No.  601,  relate  to  the  protection  of 
bottles,  siphons,  casks,  boxes,  etc.,  of  manufacturers,  bot- 
tlers, and  vendors  of  soda  water,  mineral  waters,  and 
other  beverages. 


SOUTH  DAKOTA. 

POLITICAL   CODE,   1903. 

§  3190.  It  shall  be  lawful  for  associations  and  unions 
of  workmen  to  adopt,  for  their  protection,  labels,  trade- 
marks, and  advertisements,  used  by  such  unions  or  asso- 
ciations, announcing  that  goods  manufactured  by  mem- 
bers of  such  associations  or  unions  are  so  manufactured 
by  such  members. 

§  3191.  Any  and  all  persons  using  such  union  or  asso- 
ciation trademarks,  labels  or  advertisements,  whether  ex- 
actly like  such  labels,  trademarks  or  advertisements  or 
not,  if  with  the  intention  to,  or  likely  to,  deceive  the 
public,  shall  be  guilty  of  a  misdemeanor  and  on  convic- 
tion thereof  shall  be  punished  by  imprisonment  of  not 
less  than  ten  days  nor  more  than  thirty  days,  or  a  fine 
of  not  less  than  twenty-five  dollars  nor  more  than  one 
hundred  dollars,  or  both. 


STATE  TRADEMARK  STATUTES.  689 

§  3192.  Every  person  who  shall  use  any  such  coun- 
terfeited trademark,  label  or  advertisement,s  of  such  a 
union  or  association,  after  having  been  notified  that  the 
same  is  so  counterfeited,  shall  be  guilty  of  a  misde- 
meanor and  on  conviction  thereof  shall  be  punished  by 
imprisonment  of  not  less  than  ten  days  nor  more  than 
thirty  days,  or  by  fine  of  not  less  than  twenty-five  dol- 
lars nor  more  than  one  hundred  dollars,  or  both. 

§  3193.  Every  association  of  workingmen  or  labor 
union  adopting  a  label,  trademark  or  advertisement  of 
the  kind  specified  in  section  3190,  shall  record  the  same 
in  the  office  of  the  secretary  of  state  by  leaving  two 
copies  of  said  labels  or  advertisements  with  said  secre- 
taiy  of  state,  who  shall,  under  his  hand  and  seal,  deliver 
to  the  association  or  union  recording  such  label  or  ad- 
vertisements a  certificate  of  record  for  which  he  shall 
receive  a  fee  of  one  dollar. 

§  3194.  Every  association  or  labor  union  adopting  a 
label,  trademark  or  advertisement  of  the  kind  specified 
in  section  3190  may  proceed  by  suit  in  any  of  the  courts 
of  the  state  to  enjoin  the  manufacture,  use,  display  or 
sale  of  counterfeits  or  imitations  of  such  labels,  trade- 
marks, or  advertisements,  and  that  all  courts  having 
jurisdiction  of  the  persons,  and  upon  satisfactory  proof 
of  such  wrongful  use,  shall  grant  an  injunction  for  such 
wrongful  use  of  such  counterfeits,  and  shall  award  the 
complainant  such  damages  resulting  from  such  wrongful 
use  as  may  be  proved,  and  shall  require  the  defendants 
to  pay  to  the  complainant  the  profits  derived  from  such 
wrongful  use,  or  both  profits  and  damages ;  and  the  court 
shall  also  order  all  counterfeit  labels  and  advertise- 
ments in  the  possession  or  under  the  control  of  the  de- 
fendant in  such  cause  to  be  delivered  to  an  officer  of 
the  court  or  to  the  complainants,  to  be  destroyed. 

§  3195.  In  like  manner  such  unions  or  associations  of 
workingmen  shall  be  authorized  to  proceed  against  all 
persons  who  shall  wrongfully  use  or  display  the  genuine 

44 


690  APPENDIX  H. 

labels  or  advertisements  of  the  respective  associations  or 
unions,  not  being  authorized  by  such  associations  or 
unions  to  use  or  display  the  same,  in  any  court  having 
jurisdiction  thereof. 

CIVIL  CODE,  1903. 

§  183.  There  may  be  ownership  of  all  inanimate 
things  which  are  capable  of  appropriation,  or  of  manual 
deliver}^;  of  all  domestic  animals;  of  all  obligations;  of 
such  products  of  labor  or  skill,  as  the  composition  of  an 
author,  the  good  will  of  a  business,  trademarks  and 
signs,  and  of  rights  created  or  granted  by  statute. 

§  892.  One  who  produces  or  deals  in  a  particular 
thing,  or  conducts  a  particular  business,  may  appro- 
priate to  his  exclusive  use,  as  a  trademark,  any  form, 
symbol  or  name  which  has  not  been  so  appropriated  by 
another,  to  designate  the  origin  or  ownership  thereof; 
but  he  cannot  exclusively  appropriate  any  designation, 
or  part  of  a  designation,  which  relates  only  to  the  name, 
quality  or  description  of  the  thing  or  business,  or  the 
place  where  the  thing  is  produced  or  the  business  is 
carried  on. 

§  1331.  One  who  sells  or  agrees  to  sell  any  article  to 
which  there  is  affixed  or  attached  a  trademark,  thereby 
warrants  that  mark  to  be  genuine  and  lawfully  used. 

PENAL  CODE,  1903. 

§  421.  Every  person  who  wilfully  forges,  counterfeits 
or  procures  to  be  forged  or  counterfeited  any  trade- 
mark usually  affixed  by  any  person  to  any  goods  of  such 
person,  with  intent  to  pass  off  any  goods  to  which  such 
forged  or  counterfeit  trademark  is  affixed,  or  intended  to 
be  affixed,  as  the  goods  of  such  person,  is  guilty  of  a 
misdemeanor. 

§  422.  Every  person  who,  with  intent  to  defraud,  has 
in  his  possession  any  die,  plate  or  brand,  or  any  imita- 


STATE  TRADEMARK  STATUTES.  691 

tion  of  the  trademark  of  any  person,  for  the  purpose  of 
making  any  counterfeit  or  imitation  of  any  description 
whatever  of  such  trademark,  or  of  selling  the  same  when 
made,  or  affixing  the  same  to  any  goods,  and  selling  or 
offering  the  same  for  sale  or  disposal  as  the  original 
goods  of  any  other  i:>erson,  and  every  person  who  so 
uses  or  sells  the  same,  or  who  fraudulently  uses  the 
genuine  trademark  of  another  with  intent  to  sell  or  offer 
for  sale  or  disposal,  any  goods  not  the  goods  of  the  per- 
son to  whom  such  trademark  properly  belongs,  as  gen- 
uine and  original,  is  guilty  of  a  misdemeanor. 

§  423.  Every  person  who  sells  or  keeps  for  sale  any 
goods  upon  which  any  counterfeited  trademark  has  been 
affixed,  intended  to  represent  such  goods  as  the  genuine 
goods  of  another,  knowing  the  same  to  be  counterfeited, 
is  guilty  of  a  misdemeanor. 

§  424.  Every  person  who,  with  intent  to  defraud,  af- 
fixes or  causes  to  be  affixed  to  any  goods,  or  to  any 
bottle,  case,  box  or  other  package  containing  any  goods, 
any  description  of  label,  stamp,  brand,  imprint,  printed 
wrapper,  label  or  mark,  which  designates  such  goods  by 
any  word  or  token  which  is  wholly  or  in  part  the  same 
to  the  eye,  or  to  the  ear,  as  the  word  or  any  of  the 
words  or  tokens  used  by  any  other  person  as  his  trade- 
mark, and  any  person  who  knowingly  sells,  or  keeps  or 
offers  for  sale,  any  such  bottle,  case,  box  or  other  pack- 
age, with  any  such  label,  stamp,  brand,  imprint,  printed 
wrapper,  ticket  or  mark  affixed  to  or  upon  it,  in  case 
the  person  affixing  or  causing  to  be  affixed  such  mark, 
or  so  selling,  or  exposing,  or  offering  for  sale  such  bot- 
tle, case,  box  or  other  package,  was  not  the  first  to  em- 
ploy or  use  such  words  as  his  trademark,  is  guilty  of  a 
misdemeanor,  and  in  addition  to  the  punishment  pre- 
scribed therefor,  is  liable  to  the  party  aggrieved  in  the 
penal  sum  of  one  hundred  dollars  for  each  and  every 
offense,  to  be  recovered  by  him  in  a  civil  action. 

§425.     The  word  "trademark,"  as  used  in  the  sec- 


692  APPENDIX  H. 

tions  preceding,  includes  every  description  of  word,  let- 
ter, device,  emblem,  stamp,  imprint,  brand,  printed 
ticket,  label  or  wrapper,  usually  affixed  by  any  mechanic, 
manufacturer,  druggist,  merchant  or  tradesman,  to  de- 
note any  goods  to  be  goods  imported,  manufactured, 
produced,  compounded  or  sold  by  him,  other  than  any 
name,  word  or  expression  generally  denoting  any  goods 
to  be  of  some  particular  class  or  description. 

§426.  The  word  ''goods"  as  used  in  the  sections  pre* 
ceding,  includes  every  kind  of  goods,  wares,  merchandise, 
compound  or  preparation,  which  may  be  lawfully  kept 
or  offered  for  sale. 

§  427.  The  offense  of  affixing  a  false  trademark  to 
goods  is  equally  complete  within  the  meaning  of  sections 
421,  423  and  424,  whether  such  mark  is  affixed  to  the 
goods  themselves,  or  to  any  box,  bale,  barrel,  bottle, 
case,  cask,  wrapper,  or  other  package  or  vessel,  or  any 
cover  or  stopper  thereof,  in  which  such  goods  are  put  up. 

§  428.  Whenever  any  person  engaged  in  manufactur- 
ing, bottling,  selling  in  bottles,  soda,  mineral  waters, 
porter,  ale,  cider  or  small  beer,  has  filed  and  published, 
in  the  manner  authorized  by  law,  a  description  of  a 
name,  mark  or  label  usually  stamped  by  him  in  the  bot- 
tles containing  such  beverage,  every  other  person  who, 
without  the  written  consent  of  such  manufacturer  or 
dealer,  refills  with  any  beverage,  whether  genuine  or 
otherwise,  with  the  intent  to  sell  the  same,  any  bottles 
stamped  with  such  name,  mark  or  label,  and  every  per- 
son who  sells,  disposes  of,  purchases  or  traffics  in  such 
bottles,  is  liable  to  a  penalty  of  fifty  cents  for  each  and 
every  bottle  so  filled,  sold,  bought,  disposed  of,  or  traf- 
ficked in,  for  the  first  offense,  and  five  dollars  for  each 
and  every  bottle  so  filled,  bought,  disposed  of,  or  traf- 
ficked in,  for  every  subsequent  offense. 

§  429.  Every  person  who  keeps  any  bottles  such  as 
are  designated  in  the  last  section,  without  the  written 
consent  of  the  manufacturer  so  to  do,  with  intent  to  refill 


STATE  TRADEMARK  STATUTES.  693 

or  use  or  sell  them  in  violation  of  the  last  section,  is 
liable  to  the  penalty  therein  prescribed. 

§  430.  Whenever  any  manufacturer  or  dealer  desig- 
nated by  section  428,  or  his  agent,  shall  make  oath  or 
affirmation  before  any  magistrate  that  he  has  reason  to 
believe  and  does  believe,  that  any  of  his  bottles  stamped 
and  registered  as  mentioned  in  said  section  are  being 
unlawfully  used  by  any  person  or  persons  selling  or 
manufacturing  mineral  water  or  other  beverages,  or  that 
any  junk  dealer  or  vendor  of  bottles,  has  any  of  such 
bottles  secreted  in  any  place,  such  magistrate  shall  there- 
upon issue  a  search  waiTant  to  discover  and  obtain  the 
same  under  the  provisions  of  the  law  upon  search  war- 
rants, which  are  hereby  declared  to  fully  relate  to  the 
l^rposes  of  this  chapter;  and  the  magistrate  may"  sum- 
marily bring  or  cause  to  be  brought  before  him  the  pev- 
son  in  whose  possession  the  bottles  are  found,  to  ex- 
amine into  the  circumstances  of  his  possession,  and  if 
such  magistrate  on  summar^^  examination  finds  that  such 
person  has  been  guilty  of  a  violation  of  section  428,  such 
magistrate  shall  proceed  to  impose  the  fine  therein  pre- 
scribed, and,  if  the  same  be  not  paid,  to  commit  such 
person  to  jDrison  for  a  term  not  exceeding  fifteen  days. 


TENNESSEE. 

Chapter  21,  Act  of  1905. 

AN  ACT  to  regulate  trademarks  and  to  provide  remedies  and  penalties 
for  the  violation  of  this  Act. 

Section  1.  Be  it  enacted  hy  the  general  assemhli/  of 
the  State  of  Tennessee,  that  within  the  meaning  of  this 
Act  a  trademark  shall  be  construed  to  be  any  seal,  label, 
term,  design,  device,  or  form  of  advertisement  used  for 
the  purpose  of  designating,  making  known,  or  distin- 
guishing any  goods,  wares,  merchandise,  or  other  prod- 
uct of  labor,  as  having  been  made,  manufactured,  pro- 


694  APPENDIX  H. 

duced,  prepared,  packed,  or  put  on  sale  by  any  iDerson, 
firm,  corporation,  association,  or  union  of  workinginen, 
or  by  any  member  or  members  of  such  association  or 
union. 

Sec.  2.  Be  it  further  enacted,  That  whenever  any  per- 
son, firm,  or  corporation  or  any  association  or  union 
of  workingmen  has  heretofore  adopted  or  used  or  shall 
hereafter  adopt  or  use  any  trademark,  it  shall  be  un- 
lawful to  counterfeit  or  imitate  the  same;  or  to  use,  sell, 
or  to  offer  for  sale,  or  in  any  way  utter  or  circulate  any 
counterfeit  or  imitation  of  any  such  trademark  provided 
such  trademark  has  been  filed  and  recorded  in  the  office 
of  the  Secretary  of  State,  as  provided  in  Section  4  of 
this  Act. 

Sec.  3.  Be  it  further  enacted,  That  whoever  know- 
ingly counterfeits  any  such  trademarks,  or  knowing  said 
trademark  to  be  counterfeit,  sells,  offers  for  sale,  or  in 
any  way  utters  or  circulate  any  counterfeit  or  imitation 
of  such  trademark,  or  knowing  such  trademark  to  be 
counterfeit,  keeps,  or  has  in  his  possession,  with  the 
intent  that  the  same  shall  be  sold  or  disposed  of,  any 
goods,  wares,  merchandise,  or  other  product  of  labor  to 
which  or  on  which  any  such  counterfeit  or  imitation  is 
printed,  painted,  stamped,  or  impressed;  or  knowing 
said  trademark  so  printed,  painted,  stamped,  or  im- 
pressed thereon,  sells  or  disposes  of  such  goods,  wares, 
merchandise,  or  other  product  of  labor  contained  in  any 
box,  case,  can,  or  package,  to  which  or  on  which  any 
such  counterfeit  or  imitation  is  attached,  fixed,  printed, 
painted,  stamped  or  impressed,  or  knowing  such  trade- 
mark to  be  counterfeit,  keeps  or  has  in  his  possession 
with  the  intent  that  the  same  shall  be  sold  or  disposed 
of,  any  goods,  wares,  merchandise,  or  other  product  of 
labor,  in  any  box,  case,  can,  or  package  to  which  or  on 
which  any  such  counterfeit  or  imitation  is  attached,  af- 
fixed, printed,  painted,  stamped,  or  impressed,  shall  be 
punished  by  a  fine  of  not  more  than  one  hundred  ($100) 


STATE  TRADEMARK  STATUTES.  695 

dollars,  or  by  imprisonment  for  not  more  than  three 
months;  provided  that  any  jjerson,  firm,  or  corix)ration 
buying,  selling,  or  disposing  of  any  goods,  wares,  mer- 
chandise bearing  said  counterfeit  trademark,  not  know- 
ing the  same  to  be  counterfeit,  shall  not  ]x>  deemed 
guilty  under  the  provision  of  this  Act. 

Sec.  4.  Be  it  further  enacted,  That  every  person,  firm, 
corporation,  or  association,  or  union  of  workingmen  that 
has  heretofore  adopted  or  used,  or  shall  hereafter  adopt 
or  use,  any  trademark  mentioned  and  provided  in  Sec- 
tion 1  of  this  Act,  may  file  the  same  for  record  in  the 
office  of  the  Secretary  of  State  by  leaving  two  copies, 
counterparts ;  or  facsimiles  thereof  with  said  Secretary, 
and  by  filing  therewith  a  sworn  application,  specifying 
the  name  or  names  of  the  person,  firm,  corix)ratibn,  as- 
sociation, or  union,  on  whose  behalf  such  trademark  shall 
be  filed,  the  class  of  merchandise  and  a  description  of 
the  goods  to  which  it  has  been,  or  is  intended  to  be  ap- 
propriated, stating  that  the  party  so  filing,  or  on  whose 
behalf  such  trademark  shall  have  been  filed,  has  the 
right  to  use  the  same,  that  no  other  person,  firm,  corpo- 
ration, association  or  union  has  the  right  to  such  use, 
either  in  the  identical  form  or  in  any  such  near  resem- 
blance thereto  as  may  be  calculated  to  deceive,  and  that 
the  facsimile  or  counterparts  filed  therewith  are  true  and 
correct.  There  shall  be  paid  for  such  filing  and  record- 
ing a  fee  of  five  dollars.  Said  Secretary  shall  deliver 
to  such  person,  finn,  corporation,  association,  or  union 
so  filing,  or  causing  to  be  filed,  any  such  trademark,  so 
many  duly  attested  certificates  of  the  recording  of  the 
same  as  such  person,  finn,  corporation,  association,  or 
union  may  apply  for,  for  each  of  which  certificates  said 
Secretary  shall  receive  a  fee  of  one  dollar.  Any  such  cer- 
tificates of  record  shall  in  all  suits  and  prosecutions 
under  this  Act  be  prima  facie  evidence  of  the  adoption 
of  such  trademarks.  Said  Secretary  of  State  shall  not 
record  for  any  person,  firm,  or  corporation,  association, 


696  APPENDIX  H. 

or  union  any  trademark  heretofore  filed  by  or  on  behalf 
of  any  other  person,  firm,  corporation,  association,  or 
imion. 

Sec.  5.  Be  it  further  enacted,  That  any  person,  who 
sliall  for  himself,  on  behalf  of  any  other  person,  firm, 
corporation,  association,  or  union,  procure  the  filing  of 
any  trademark  in  the  office  of  the  Secretary  of  State, 
under  the  provisions  of  this  Act,  by  knowingly  making 
any  false,  or  fraudulent  representation  or  declaration 
verbally  or  in  writing,  or  by  any  means  known  to  be 
fraudulent,  shall  be  liable  to  pay  any  damages  sustained 
in  consequence  of  such  filing,  to  be  recovered  by  or  on 
behalf  of  the  party  injured  thereby,  in  any  court  having 
jurisdiction  and  shall  be  punished  by  a  fine  not  exceed- 
ing one  hundred  dollars  or  by  imprisonment  not  exceed- 
ing three  months. 

Sec.  6.  Be  it  further  efiacted,  That  every  such  person, 
firm,  corporation,  association,  or  union,  adopting  or 
using  a  trademark,  may  proceed  by  suit  to  enjoin  the 
manufacture,  use,  display,  or  sale  of  any  counterfeits 
or  imitations  thereof,  and  all  courts  of  competent  ju- 
risdiction shall  grant  injunctions  to  restrain  such  manu- 
facture, use,  display  or  sale  and  may  award  tlie  com- 
plainant in  any  such  suit,  the  court  having  jurisdiction, 
such  damages  resulting  from  such  fraudulent  manu- 
facture, use,  display,  or  sale  as  may  be  by  the  court  or 
jury  deemed  just  and  reasonable;  and  shall  require  the 
defendants  to  pay  to  such  person,  firm,  corporation,  as- 
sociation, or  union  all  profits  derived  from  such  wrong- 
ful manufacture,  use,  display,  or  sale,  and  such  court 
shall  also  order  that  all  such  counterfeit  or  imitations 
in  the  possession  or  under  the  control  of  any  defendant 
in  such  case  be  delivered  to  an  officer  of  the  court  or  to 
the  complainant,  to  be  destroyed. 

Sec.  7.  Be  it  further  enacted,  That  every  person  who 
shall  use  or  display  the  genuine  trademark  for  the  pur- 
ix)se  of  fraud  of  any  such  person,  firm,  corporation,  as- 


STATE  TRADEMARK  STATUTES.  697 

sociation,  or  union,  in  any  manner  ncjt  heing  authorized 
so  to  do  by  such  person,  linn,  corporation,  association, 
or  union,  shall  be  deemed  guilty  of  a  misdemeanor,  and 
shall  be  punished  by  imprisonment  for  not  less  than 
three  months,  or  by  a  fine  of  not  more  than  one  hun- 
dred dollars.  In  all  cases  where  such  association  or 
union  is  not  incorporated,  suits  under  this  Act  may  be 
commenced  and  prosecuted  by  an  officer  or  member  of 
such  association  or  union,  in  behalf  of  and  for  the  use 
of  such  association  or  union. 

Se€.  8.  Be  it  further  enacted,  That  none  of  the  pro- 
visions of  this  Act  shall  affect  or  apply  to  persons, 
firms,  or  corporations  who  shall  in  good  faith  buy  or 
come  into  possession  of  goods  with  a  counterfeit  trade- 
mark thereon,  when  such  person,  firm,  or  corporation  did 
not  know  at  the  time  he  or  they  obtained  possession  of 
such  goods  that  the  same  were  stamjied  with  a  counter- 
feit trademark;  provided  such  person,  firm,  or  corpora- 
tion does  not  knowingly  misrepresent  the  facts  regard- 
ing the  trademark  at  the  time  he  offers  such  goods  for 
sale. 

Sec.  9.  Be  it  further  enacted,  That  this  Act  shall  take 
effect  from  and  after  its  passage,  the  public  welfare  re- 
quiring it. 

Passed  January  31,  1905. 

W.  K.  Abernathy, 
Speaker  of  the  House  of  Representatives. 

J.  I.  Cox, 
Speaker  of  the  Senate. 
Approved.  James  B.  Feazier, 

Governor. 

A  true  copy.  Attest :  Jno  W.  Morton,  Secy,  of  State. 


698  APPENDIX  H. 

TEXAS. 

General  Laws  1895,  Ch.  81. 

AN  ACT  to  protect  persons,  associations,  private  corporations  and 
unions  of  workingmen,  incorporated  or  unincorporated,  in  their 
labels,  trademarks,  designs,  devices,  imprints,  and  forms  of  adver- 
tising and  names;  and  to  prescribe  penalties  for  violation  of 
same,  and  to  repeal  all  laws  or  parts  of  laws  in  conflict  with  this 
act. 

Section  1.  That  whenever  any  person,  association, 
private  corporations  or  union  of  workingmen,  incorpo- 
rated or  unincorporated,  have  adopted  or  shall  hereafter 
adopt  for  their  protection  any  label,  trademark,  design, 
device,  imprint  or  form  of  advertisement,  indicating  that 
goods  to  which  such  label,  trademark,  design,  device,  im- 
print or  form  of  advertisement  shall  be  attached,  were 
manufactured  by  such  person,  association,  private  corpo- 
rations or  union,  or  by  a  member  or  members  of  such 
association  or  union,  it  shall  be  unlawful  for  any  per- 
son, inclusive  of  ofScers,  agents,  i-eceiver  or  receivers  of 
corjoorations,  to  counterfeit  or  imitate  such  label,  trade- 
mark, design,  device,  imprint  or  form  of  advertisement 
or  to  use  such  counterfeit  or  imitation  of  such  label, 
trademark,  design,  device,  imprint  or  form  of  advertise- 
ment, knowing  the  same  to  be  counterfeit  or  imitation, 
or  to  aid,  assist,  countenance  or  knowingly  permit  such 
counterfeit  or  imitation  or  the  use  of  such  counterfeit 
or  imitation  for  his  own  use  or  benefit,  or  for  the  use 
or  benefit  of  any  corporation  of  which  he  may  then  be 
an  officer,  agent  or  receiver.  Every  person,  whether  in 
his  individual  capacity  or  as  an  officer,  agent  or  re- 
ceiver of  a  corporation,  violating  this  section,  shall,  upon 
conviction,  be  punished  by  a  fine  of  not  less  than  twen- 
ty-five nor  more  than  one  hundred  dollars.  Each  day's 
violation  of  this  section  shall  be  considered  a  separate 
offense. 

Sec.  2.     Every  person,  whether  in  his  individual  ca- 


STATE  TRADEMARK  STATUTES.  699 

pacity  or  as  the  officer,  agent  or  receiver  of  a  corpora- 
tion, who  shall  willfully  and  knowingly  use  or  display 
the  genuine  label,  trademark,  design,  device,  imprint,  or 
form  of  advertisement,  or  name  of  any  such  person,  as- 
sociation or  union,  incorporated  or  unincorporated,  not 
being  authorized  to  use  or  display  the  same,  or  shall 
aid,  assist,  countenance  or  knowingly  permit  the  use  of 
same,  not  being  authorized  to  use  the  same,  shall,  upon 
conviction,  be  punished  by  fine  of  not  less  than  twenty- 
five  nor  more  than  one  hundred  dollars. 

Sec.  3.  Every  person,  association  or  union  of  work- 
ingmen,  incorporated  or  unincorporated,  having  ado])ted 
a  label,  trademark,  design,  device,  imprint  or  foi*m  of 
advertisement,  as  aforesaid,  may  proceed  by  suit  to  en- 
join the  wrongful  manufacture,  use,  display  or  sale  of 
any  such  label,  trademark,  design,  device,  imprint  or 
form  of  advertisement,  and  the  manufacture,  use,  dis- 
jjlay  or  sale  of  any  such  counterfeit  or  imitation,  and  all 
courts  having  jurisdiction  thereof  shall  grant  injunc- 
tions to  restrain  such  manufacture,  use,  display  or  sale, 
and  shall  award  the  plaintiff  in  such  suit  such  damages 
resulting  from  such  wrongful  manufacture,  use,  display 
or  sale  as  by  him  may  have  been  sustained.  Where  such 
association  or  union  is  not  incorporated  suits  under  this 
act  may  be  commenced  and  prosecuted  by  any  officer  or 
member  of  such  association  or  union  in  his  own  name, 
for  himself  and  for  the  use  and  benefit  of  such  associa- 
tion or  union. 

Sec.  4.  Every  person,  association  or  union  of  work- 
ingmen,  incorporated  or  unincoi-jiorated,  that  has  hereto- 
fore or  shall  hereafter  adopt  a  label,  trademark,  design, 
device,  imprint  or  form  of  advertisement,  shall  file  the 
same  in  the  office  of  the  secretary  of  state  by  leaving 
two  copies,  counterparts  or  fo/'  similes  thereof,  with  the 
secretary  of  state,  and  said  secretary  shall  deliver  back 
to  such  person,  association  or  union  so  filing  the  same 
one   of  said  copies,  counterparts  or  fac  similes,  along 


700  APPENDIX  H. 

with  and  attached  to  a  duly  attested  certificate  of  the 
filing  of  same,  for  which  he  shall  receive  a  fee  of  one 
dollar  from  such  person,  association  or  union.  Such  cer- 
tificate of  filing  shall  in  all  suits  and  prosecutions  under 
this  act  be  sufficient  proof  of  the  adoption  of  such  label, 
trademark,  design,  device,  imprint  or  form  of  advertise- 
ment, and  of  the  right  of  such  person,  association  or 
union  to  adopt  the  same.  No  label,  trademark,  design, 
device,  imprint  or  form  of  advertisements  shall  be  filed 
as  aforesaid  that  would  probably  be  mistaken  for  a  label, 
trademark,  design,  device,  imprint  or  form  of  adver- 
tisement already  of  record :  provided,  that  no  person  or 
association  shall  be  permitted  to  register  as  a  label, 
trademark,  design,  device,  imprint  or  form  of  advertise- 
ment, any  emblem,  design  or  resemblance  thereto  that 
has  been  adopted  or  used  by  any  charitable,  benevolent 
or  religious  society  or  association  without  their  consent: 
and  provided,  further,  that  all  persons,  institutions  or 
associations  now  using  a  label,  trademark,  design,  de- 
vice, imprint  or  form  of  advertisement  shall  have  thirty 
days'  time  after  this  act  takes  effect  in  which  to  file  such 
label,  trademark,  design,  device,  imprint  or  form  of  ad- 
vertisement under  the  provisions  of  this  act.  before  the 
same  can  be  registered  by  others. 

Sec.  5.  All  laws  and  parts  of  laws  in  conflict  with 
the  provisions  of  this  act  be  and  the  same  are  hereby 
repealed. 

Sec.  6.  It  being  important  that  the  benefits  of  this 
act  be  realized  at  once,  because  the  parties  to  be  benefited 
by  this  act  have  no  adequate  protection  under  existing 
laws,  creates  an  emergency  and  an  imperative  public 
necessity  that  the  constitutional  rule  requiring  bills  to 
be  read  on  three  several  days  be  suspended,  and  that  this 
act  take  effect  and  be  in  force  from  and  after  its  pas- 
sage, and  it  is  so  enacted. 

Approved  April  29,  1895. 

Sayles'  Civ.  St.  Articles  318a,  318b,  p.  148  relate  to 


STATE  TRADEMARK  STATUTES.  701 

the  protection  of  bottles,  boxes,  siphons,  etc.,  of  manu- 
facturers and  dealers  in  mineral  water  and  other  bev- 
erages, and  manufacturers  of  medicines  or  other  com- 
pounds. 

UTAH. 

EEV.    ST.,    1898. 

2720.  Defined.  The  phrase  ''trademark"  as  used 
in  this  title  includes  every  description  of  word,  letter, 
device,  emblem,  stamp,  imjDrint,  printed  ticket,  label,  or 
wrapper  usually  aflSxed  by  any  mechanic,  manufacturer, 
diiiggist,  merchant,  tradesman,  association,  or  union, 
whether  incorporated  or  unincor|Dorated,  to  denote  any 
goods  to  be  goods  imported,  manufactured,  produced, 
compounded,  or  sold  by  him,  or  by  such  association  or 
union,  other  than  any  name,  word,  or  expression  gen- 
erally denoting  any  goods  to  be  of  some  particular  class 
or  description. 

2721.  Recorded  With  Secretary  of  State.  Any  per- 
son, association,  or  union,  may  record  any  trademark 
or  name  by  filing  with  the  Secretary  of  State  his  or  its 
claim  to  the  same,  and  a  copy  or  description  of  such 
trademark  or  name,  with  his  affidavit  attached  thereto, 
certified  to  by  any  officer  authorized  to  take  acknowledg- 
ments of  conveyances,  setting  forth  that  he,  or  the  firm, 
corporation,  association,  or  union,  of  which  he  is  a  mem- 
ber, is  the  exclusive  owner,  or  agent  of  the  owner,  of 
such  trademark  or  name. 

2722.  Record  Open  to  Public.  The  Secretary  of 
State  must  keep  for  public  examination  a  record  of  all 
trademarks  or  names  filed  in  his  office,  with  the  date 
when  filed  and  name  of  claimant ;  and  must  at  the  time 
of  filing  collect  from  each  claimant  the  authorized  fee. 

2723.  Ownership,  Transfer,  Damages  for  Infringe- 
ment. Any  person  who  has  first  adopted  and  used  a 
trademark  or  name,  whether  within  or  beyond  the  limits 


702  APPENDIX  H. 

of  this  State,  is  its  original  owner.  Such  ownership  may 
be  transferred  in  the  same  manner  as  personal  prop- 
erty, and  is  entitled  to  the  same  protection  by  suits  at 
laAv;  and  any  court  of  competent  jurisdiction  may  re- 
strain, by  injunction,  and  award  damages  for  any  use 
of  trademarks  or  names  in  violation  of  this  title. 

4482.  Forging  or  Counterfeiting  Trademark.  Every 
person  wlio  wilfully  forges  or  counterfeits,  or  procures 
to  be  forged  or  counterfeited,  any  trademark  usually 
affixed  by  any  person,  or  by  any  association  or  union  of 
workingmen,  to  his  goods,  which  has  been  recorded  in 
the  office  of  the  Secretaiy  of  State,  with  intent  to  pass 
off  any  goods  to  which  such  forged  or  counterfeited 
trademark  is  affixed,  or  intended  to  be  affixed,  as  the 
goods  of  such  person  or  such  association  or  union  of 
workingmen,  is  guilty  of  a  misdemeanor. 

4483.  Selling  Goods  Be,\eing  Counterfeited  Trade- 
mark. Every  person  who  sells,  or  keeps  for  sale,  any 
goods  upon  or  to  which  any  counterfeited  trademark  has 
been  affixed,  after  such  trademark  has  been  recorded  in 
the  office  of  the  Secretary  of  State,  intending  to  repre- 
sent such  goods  as  the  genuine  goods  of  another,  know- 
ing the  same  to  be  counterfeited,  is  guilty  of  a  misde- 
meanor. 

4484.  Forged  Trademark,  etc.  Defined.  The  phrases, 
''forged  trademark"  and  ''counterfeited  trademark,"  or 
their  equivalents,  as  used  in  this  chapter,  include  every 
alteration  or  imitation  of  any  trademark  so  resembling 
the  original  as  to  be  likely  to  deceive. 

4485.  "Trademark"  Defined.  The  phrase  "trade- 
mark" as  used  in  the  three  preceding  sections,  includes 
every  description  of  word,  letter,  device,  emblem,  stamp, 
imprint,  brand,  printed  ticket,  label  or  wrapper,  usually 
affixed  by  any  mechanic,  manufacturer,  druggist,  mer- 
chant, or  tradesman,  or  by  any  association  or  union  of 
workingmen,  to  denote  any  goods  to  be  goods  imported, 
manufactured,  produced,  compounded,  or  sold  by  him,  or 


STATE  TRADEMARK  STATUTES.  703 

by  such  association  or  union  of  workingmeu,  otlier  than 
any  name,  word,  or  expression  generally  denoting  any 
goods  to  be  of  some  particular  class  or  description. 

4486.  Refilling  Cask,  Etc.,  Bearing  Trademabk. 
Every  person  who  has  or  used  any  cask,  bottle,  vessel, 
case,  cover,  label,  or  other  thing  bearing  or  having  in 
any  way  connected  with  it  the  duly  filed  trademark  or 
name  of  another,  for  the  purpose  of  disposing  with  in- 
tent to  deceive  or  defraud,  or  anj^  article  other  than  that 
which  such  cask,  bottle,  vessel,  case,  cover,  label,  or  other 
thing  originally  contained  or  was  connected  with  by  the 
owner  of  such  trademark  or  name,  is  guilty  of  a  misde- 
meanor. 

Note:    The  fee  for  registering  trademark  is  $3.00. 


VERMONT. 

Laws  of  1898. 

Public  Act  No.  158. 
AN  ACT   to  provide   for  the  registration  of   trademarks. 

Section  1.  Any  person,  partnership  or  corporation 
may  adopt  as  and  for  his  or  their  trademark  or  trade- 
name any  particular  name,  term,  design,  device,  label, 
stamp  or  form  of  advertisement,  not  previously  owned 
or  adopted  by  any  other  person,  partnership  or  corpo- 
ration, to  designate  or  distinguish  any  goods,  wares  or 
merchandise  by  him  or  them  manufactured  or  prepared, 
and  may  file  the  same  for  record  in  the  office  of  the 
secretary  of  state,  by  leaving  two  copies,  counterparts 
or  fac  similes  thereof,  with  the  said  secretary;  and  shall 
also  file  therewith  an  accurate  description  of  such  name, 
term,  design  or  device,  label,  stamp  or  fonn  of  adver- 
tisement, verified  under  oath  by  the  person  or  some 
officer  of  the  partnership  or  corporation  by  whom  it  is 
filed. 


704  APPENDIX  H. 

There  shall  be  paid  for  such  filing  the  fee  of  two  dol- 
lars. 

Said  secretary  shall  deliver  to  such  person,  partner- 
ship or  corporation  so  filing  the  same,  a  duly  attested 
certificate  of  the  record  of  the  same,  for  which  he  shall 
receive  the  fee  of  two  dollars.  Such  certificate  of  rec- 
ord shall  in  all  suits  and  prosecutions  under  this  act 
be  sufficient  proof  of  the  adoption  of  such  trademark 
or  tradename.  No  name,  term,  design,  device,  label, 
stamp  or  form  of  advertisement  shall  be  recorded  that 
in  any  way  resembles  or  would  be  reasonably  mistaken 
for  a  name,  term,  design,  device,  label,  stamp  or  form 
of  advertisement  already  on  record. 

Sec.  2.  The  secretary  of  state  is  authorized  to  make 
rules  and  regulations  and  prescribe  forms  for  the  filing 
of  names,  terms,  designs,  devices,  labels,  stamps  and 
forms  of  advertisement  under  the  provisions  of  this  act. 

Sec.  3.  Every  person  who,  without  authority  from  the 
owner  of  a  trademark  or  tradename  adopted  and  re- 
corded as  aforesaid,  shall  knowingly  and  willfully  make 
or  sell  any  representation,  likeness,  similitude,  copy,  imi- 
tation or  counterfeit  of  such  tradem.ark  or  tradename, 
and  every  person  who,  without  authority  from  such 
owner,  shall  affix,  impress  or  use  such  trademark  or 
tradename  upon  any  goods,  wares  or  merchandise  shall 
be  punished  by  a  fine  not  exceeding  one  thousand  dol- 
lars or  by  imprisonment  not  exceeding  one  year,  or  by 
both  said  fine  and  imprisonment. 

Sec.  4.  Every  person  who  shall  knowingly  and  will- 
fully sell  or  keep  for  sale  any  goods  upon  which  or  in 
connection  with  which  shall  be  affixed  any  forgery,  imi- 
tation or  counterfeit  of  a  trademark  or  tradename 
adopted  and  recorded  as  aforesaid,  and  intended  to  rep- 
resent the  said  goods  as  the  genuine  goods  of  any  other 
person,  shall  be  punished  by  a  fine  not  exceeding  one 
thousand  dollars  or  by  imprisonment  not  exceeding  one 
year,  or  by  both  such  fine  and  imprisonment. 


STATE   TRADEMARK    STATUTES.  705 

Sec.  5.  Every  person  who  shall,  with  intent  to  de- 
fraud any  other  person,  partnership  or  corporation, 
knowingly  affix  or  cause  to  be  affixed  to  or  upon  any 
iDackage  or  bottle  containing  any  goods,  wares  or  mer- 
chandise any  name,  term,  design,  device,  label,  stamjj 
or  I'onn  of  advertisement,  which  shall  designate  such 
goods,  wares  or  merchandise,  either  wholly  or  in  part 
by  a  word  or  words,  or  by  general  design,  which  shall 
be  wholly  or  in  part  the  same  either  in  appearance  to 
the  eye,  or  in  sound  to  the  ear,  as  the  word  or  words 
or  the  general  design  of  any  trademark  or  tradename 
adopted  and  recorded,  as  provided  in  this  act,  or  who 
shall  knowingly  sell,  or  expose  for  sale,  any  such  pack- 
age or  bottle  with  any  such  imitating  or  counterfeit 
name,  term,  design,  device,  label,  stamp  or  form  of  ad- 
vertisement, may  also  be  punished  by  imprisonment  not 
exceeding  one  year,  or  by  a  fine  of  not  more  than  five 
hundred  dollars,  or  by  both  such  fine  and  imprisonment. 

Sec.  6.  The  owner  of  any  trademark  or  tradename 
adopted  and  recorded  as  provided  in  section  1  of  this 
act  may  proceed  by  suit  to  enjoin  any  and  all  other  per- 
sons, partnerships  or  corporations  from  the  manufacture, 
use  or  sale,  without  the  authority  of  said  owner,  of  all 
likenesses,  similitudes,  co])ies,  imitations  or  counterfeits 
thereof,  and  also  from  selling  or  exposing  for  sale  any 
and  all  goods,  compounds,  or  preparations  to  or  with 
which  such  unauthorized  likeness,  similitudes,  coi)ies, 
imitations  or  counterfeits  shall  be  affixed  or  connected. 
And  all  courts  having  jurisdiction  in  equity  maj^  grant 
injunctions  to  restrain  and  enjoin  such  manufacture,  use, 
sale  and  exposure  for  sale,  and  may  award  to  the  com- 
plainant in  such  suit  such  a  sum  of  money  as  shall  be 
just  and  reasonable  compensation  for  the  damage  to  the 
reputation  of  the  complainant's  genuine  goods,  com- 
pounds or  preparations  by  reason  of  such  wrongful  man- 
ufacture, use,  sale  or  exposure  for  sale;  and  may  also 
require  the  defendant  to  pay  to  the  complainant  in  such 

45 


700  APPENDIX  H. 

suit  a  sum  equal  to  the  amount  which  the  complainant 
would  have  received  for  the  same  quantity  of  genuine 
goods,  compounds  or  preparations,  and  may  also  order 
that  all  such  likenesses,  similitudes,  copies,  imitations  or 
counterfeits  in  the  possession  of  or  under  the  control  of 
any  defendant  in  such  case  be  delivered  to  an  officer 
of  the  court,  or  to  the  complainant,  to  be  destroyed. 

Approved  November  22,  1898. 


FORM   OF  APPLICATION   FOR  REGISTRATION. 

Certificate    accompanying    a (Insert    Name,    Term,    Design, 

Device,  Label,  Stamp  or  Form  of  Advertisement,  as  the  case  may  be.) 

adopted  as  a  (Insert  Trademarlv,   or  Tradename,   as   the  case 

may  be.)  and  filed  in  accordance  with  No.  158  of  the  Acts  of  1898, 
entitled  "An  act  to  provide  for  the  Registration  of  Trademarks." 

Name  or  names  of  the  Persons,  Partnership  or  Corporation 

(Follow   regulations   below   at   A.)      Residence,   location   or   place   of 

business,  class  of  merchandise  and  the  particular  description 

of  goods  comprised   in  such  class  to  which  the  (Insert  Name, 

Term,  Design,  Device,  Label  Stamp,  or  Form  of  Advertisement,  as  the 
case  may  be,)  has  been  or  is  intended  to  be  appropriated  (Fol- 
low regulations  below  at  B.)  (Here  insert  the  trademark  or  trade- 
name adopted  and  send  three  extra  copies,  fac-similes  or  counterparts 
of  the  trademark  or  name.)     Length  of  time,  if  any,  during  which  the 

(Insert  Name,  Term,  Design,   Device,  Label,   Stamp,   or  Form 

of  Advertisement,  as  the  case  may  be.)  has  been  in  use.     Since  

(Give  Month,  Day  of  Month  and  Year  when  adopted,  or  give  date  since 
when  in  use. 


REGULATIONS. 

A.  If  a  corporation,  state  under  the  laws  of  what  State  incorporated. 
If  one  or  more  persons  are  doing  business  under  a  partnership  name, 

state  the  name  of  such  person  or  persons  and  add  the  words  "doing 
business  under  the  name  and  style  of,"  then  give  the  partnership  name 
under  which  the  business  is  conducted. 

B.  State,  first,  as  near  as  possible  in  one  or  two  words,  the  gen- 
eral class  of  merchandise  to  which  the  name,  term,  design,  device, 
label,  stamp,  or  form  of  advertisement  has  been  or  is  intended  to  be 
appropriated; 

Second,  as  near  as  possible  in  one  or  two  words,  the  particular  de- 


STATE  TRADEMARK  STATUTES.  707 

scription  or  designation  is  such  general  class  of  merchandise.  Do  not 
describe  the  composition,  or  name  the  parts  which  comprise  the  for- 
mula of  which  the  merchandise  is  composed; 

Third,  by  using  the  following  words:  "the  essential  feature  of  the 
(trademark,  or  tradename)  is,"  giving  what  is  considered  to  be  the 
essential  feature  or  features  thereof.  If  an  illustration  or  pictorial 
representation  is  used  for  a  trademark,  it  is  very  desirable  that  a 
word  or  words  shall  also  form  a  part  of  the  "essential  features"  of 
such  trademark; 

Fourth,  by  using  the  following  words,  that:  "The  style  and  size  of 
type  and  the  color  of  ink  and  paper  may  be  varied  at  pleasure." 

*I,  do  hereby  declare,  that  (Insert  the  name  of  the 


Person,  Partnership,  or  Corporation  adopting  the  Trademark  or  Trade- 
name.)   has  a  right  to  the  use  of  the  (Insert  Trademark,  or 

Tradename,  as  the  case  may  be.)  referred  to  in  the  foregoing  certifi- 
cate, and  that  no  other  person,  partnership  or  corporation  has  the  right 
to  such  use,  either  in  the  identical  form  or  in  any  such  near  resem- 
blance thereto  as  may  be  calculated  to  deceive,  and  I  further  declare 
that  the  foregoing  description  and  the  fac-similes  copies  or  counter- 
parts filed  with  the  foregoing  certificate  are  true,  correct  and  accurate. 

In  Witness  Whereof,  I  have  hereunto  signed  my  name  this 

day  of  ,  190 — 

(Sign  here.)   

State  of  Vermont,    \ss. 

190— 

Then  personally  appeared  the  above-named  and  made  oath 

that  the  foregoing  declaration  by  him  subscribed  is  true. 
Before  me. 


(Here   write   official   title.) 

*  If  a  person,  insert  name;  if  an  ofl5cer  of  a  partnership  or  corpora- 
tion. Insert  name,  title  of  office,  and  name  of  the  partnership  or  corpo- 
ration. Outside  of  Vermont,  oath  should  be  administered  by  a  Com- 
missioner for  Vermont  or  Notary  Public,  with  seal. 


708  APPENDIX  H. 

VIRGINIA. 

Act  of  April  30,  1903. 

AN  ACT  to  protect  persons,  firms,  corporations,  associations,  or  unions 
of  workingmen  in  the  use  of  their  labels,  trademarks,  terms,  de- 
signs, devices,  and  forms  of  advertisements,  and  to  provide  for 
the  registry  thereof.     Approved  April  30,  1903. 

1.  Be  it  enacted  by  the  General  Assembly  of  Virginia, 
That  whenever  any  person,  firm,  corporation,  or  any  as- 
sociation or  union  of  workingmen  has  heretofore  adopted 
or  used,  or  shall  hereafter  adopt  or  use,  any  label,  trade- 
mark, term,  design,  device,  or  form  of  advertisement  for 
the  purpose  of  designating,  making  known,  or  distin- 
guishing any  goods,  wares,  merchandise,  or  other  prod- 
uct of  labor,  as  having  been  made,  manufactured,  pro- 
duced, prepared,  packed,  or  put  on  sale  by  such  person, 
firm  or  corporation,  or  association,  or  union  of  work- 
ingmen, by  a  member  or  members  of  such  association 
or  union,  and  has  filed  the  same  for  registry  as  herein- 
after provided,  it  shall  be  unlawful  to  counterfeit  or 
imitate  such  label,  trademark,  term,  design,  device  or 
form  of  advertisement,  or  to  use,  sell,  offer  for  sale  or 
in  any  way  utter  or  circulate  any  counterfeit  or  imita- 
tion of  any  such  label,  trademark,  tenn,  design,  device 
or  form  of  advertisement. 

2.  "Whoever  counterfeits  or  imitates  any  such  regis- 
tered label,  trademark,  term,  design,  device,  or  form  of 
advertisement,  or  knowingly  and  with  intent  to  deceive, 
sells,  offers  for  sale,  or  in  any  way  utters  or  circulates 
any  counterfeit  or  imitation  of  any  such  registered  label, 
trademark,  term,  design,  device,  or  form  of  advertise- 
ment, or  knowingly  and  with  intent  to  deceive,  keeps,  or 
has  in  his  possession,  with  the  intent  that  the  same  shall 
be  sold  or  disposed  of,  any  goods,  wares,  merchandise, 
or  other  product  of  labor  to  which,  or  on  which,  any 


STATE   TRADEMARK    STATUTES.  709 

such  counterfeit  or  imitation  is  printed,  painted,  stamped 
or  impressed;  or  knowingly  and  with  intent  to  deceive, 
knowingly  sells  or  disposes  of  any  goods,  wares,  mer- 
chandise or  other  product  of  labor  contained  in  any  box, 
case,  can,  or  package  to  which,  or  on  which,  any  such 
counterfeit  or  imitation  is  attached,  affixed,  printed, 
painted,  stamped  or  impressed,  or  knowingly  and  with 
intent  to  deceive,  keeps  or  has  in  his  possession  with 
intent  that  the  same  shall  be  sold  or  disposed  of,  any 
goods,  wares,  merchandise,  or  other  product  of  labor  in 
any  box,  case,  can,  or  package  to  which,  or  on  which, 
any  such  counterfeit  or  imitation  is  attached,  affixed, 
printed,  painted,  stamped  or  impressed,  shall  be  pun- 
ished by  a  fine  of  not  more  than  one  hundred  dollars, 
or  by  imprisonment  for  not  more  than  three  months. 
All  such  applications  for  registry  shall  be  made  on 
forms  prescribed  by  the  secretary  of  the  Commonwealth, 
and  any  person  applying  to  the  secretary  of  the  Com- 
monwealth for  a  certificate  of  registry  of  any  label, 
trademark,  term,  design,  device  or  fonn  of  advertise- 
ment, shall  furnish  to  the  said  secretaiy  a  copy  fac- 
simile, or  counterpart  thereof. 

3.  Ever\^  such  person,  firm,  corporation,  association 
or  union  that  has  heretofore  adopted  or  used,  or  shall 
hereafter  adopt  or  use  a  label,  trademark,  term,  design, 
device,  or  form  of  advertisement,  as  provided  in  section 
one  of  this  act,  may  file  the  same  for  registry  in  the 
office  of  the  Secretary  of  the  Commonwealth  by  leaving 
six  copies,  counterparts,  or  fac-similes  thereof,  with  the 
said  secretary,  and  by  filing  herewith  a  sworn  applicar- 
tion,  specifying  (1)  the  name  or  names  of  the  person, 
firm,  corporation,  association  or  union,  on  whose  behalf 
such  label,  trademark,  term,  design,  de\dce,  or  form  of 
advertisement  shall  be  filed;  (2),  the  class  of  merchan- 
dise and  the  description  of  the  goods  to  which  it  has 
been,  or  is  intended  to  be  appropriated,  stating  that  the 
party  so  filing,  or  on  whose  behalf  such  label,  trade- 


710  APPENDIX  H. 

mark,  term,  design,  device,  or  form  of  advertisement 
shall  be  filed,  has  a  right  to  use  the  same;  (3),  that  no 
other  person,  firm,  association,  nnion  or  corporation  has 
the  right  to  such  use,  either  in  the  identical  form  or  in 
any  such  near  resemblance  thereto  as  may  be  calculated 
to  deceive,  and  (4),  that  the  fac-simile  or  counterparts 
filed  therewith  are  true  and  correct.  There  shall  be  paid 
for  such  filing  and  registry  to  the  secretary  of  the  Com- 
monwealth a  fee  of  two  dollars  and  fifty  cents.  Said 
secretary  shall  deliver  to  such  person,  firm,  corporation, 
association,  or  union  so  filing,  or  causing  to  be  filed,  any 
such  label,  trademark,  teiTii,  design,  device,  or  form  of 
advertisement,  so  many  duly  attested  certificates  of  the 
registry  of  the  same  as  such  person,  firm,  corporation, 
association,  or  union  may  apply  for,  for  each  of  which 
certificates  said  secretary  shall  receive  a  fee  of  two  dol- 
lars and  fifty  cents.  Any  such  certificate  of  registry 
shall  in  all  suits  and  prosecutions  under  this  act  be  suf- 
ficient proof  of  the  adoption  and  registry  of  such  label, 
trademark,  term,  design,  device,  or  form  of  advertise- 
ment. Said  secretaiy  of  the  Commonwealth  shall  not 
record  for  any  person,  firm,  corporation,  union,  or  as- 
sociation any  label,  trademark,  design,  term,  device,  or 
form  of  advertisement  that  would  probably  be  mistaken 
for  any  label,  trademark,  term,  design,  device  or  form 
of  advertisement  heretofore  filed  by  or  on  behalf  of  any 
other  person,  firm,  corporation,  union  or  association. 

4.  Any  person  who  shall  for  himself,  or  on  behalf  of 
any  other  person,  firm,  corporation,  association,  or  union, 
procure  the  filing  and  registry  of  any  label,  trademark, 
term,  design,  or  form  of  advertisement  in  the  office  of 
the  secretary  of  the  Commonwealth,  under  the  provisions 
of  this  Act,  by  making  any  false  or  fraudulent  repre- 
sentations or  declaration  verbally  or  in  writing,  or  by 
any  fraudulent  means,  shall  be  liable  to  pay  any  dam- 
ages sustained  in  consequence  of  any  such  filing,  to  be 
recovered  by  or  on  behalf  of  the  party  injured  thereby, 


STATE  TRADEMARK  STATUTES,  711 

in  any  court  having  jurisdiction,  and  shall  be  i)unished 
by  a  fine  not  exceeding  one  hundred  dollars  or  by  im- 
prisonment not  exceeding  three  months. 

5.  Every  such  person,  firm,  corporation,  association, 
or  union,  which  has  adopted  and  registered  a  label, 
trademark,  term,  design,  device,  or  form  of  advertise- 
ment as  aforesaid,  may  proceed  by  suit  to  enjoin  the 
manufacture,  use,  display,  or  sale  of  any  counterfeits  or 
imitations  thereof,  and  all  courts  of  competent  jurisdic- 
tion shall  grant  injunctions  to  restrain  such  manufacture, 
use,  display,  or  sale,  as  may  be  by  the  said  court  deemed 
just  and  reasonable,  and  shall  require  the  defendants  to 
pay  to  such  person,  firm,  corporation,  association,  or 
union,  all  profits  derived  from  such  wrongful  manu- 
facture, use,  display,  or  sale;  and  such  court  shall  also 
order  that  any  such  counterfeits  or  imitations  in  the 
possession,  or  under  the  control  of  any  defendant  in 
such  cause  be  delivered  to  an  officer  of  the  court,  or  to 
the  complainant,  to  be  destroyed. 

6.  Ever}^  person  who  shall  use  or  display  the  genuine 
registered  label,  trademark,  term,  design,  device,  or  fonn 
of  advertisement,  of  any  such  person,  finn,  corporation, 
association  or  union  in  any  manner,  not  being  authorized 
so  to  do  by  such  person,  firm,  cor^ooration,  union,  or  as- 
sociation, shall  be  deemed  guilty  of  a  misdemeanor,  and 
shall  be  punished  by  imprisonment  for  not  more  than 
three  months,  or  by  a  fine  of  not  more  than  one  hundred 
dollars.  In  all  cases  where  such  association,  or  union, 
is  not  incorporated,  suits  under  this  act  may  be  com- 
menced and  prosecuted  by  an  officer,  or  member  of  as- 
sociation or  union,  on  behalf  of,  and  for  the  use  of,  such 
association  or  union. 

7.  Any  person,  or  persons,  who  shall  in  any  way  use 
the  name  or  seal  of  any  such  person,  firm,  corjioration, 
association,  or  union,  or  officer  thereof,  in  and  about  the 
sale  of  goods,  or  otherwise,  not  being  authorized  to  so 
use  the  same,  shall  be  guilty  of  a  misdemeanor,  and  shall 


712  APPENDIX  H. 

be  punishable  by  imprisonment  for  not  more  than  three 
months,  or  by  a  fine  of  not  more  than  one  hundred  dol- 
lars. 

8.  This  act  shall  take  effect  and  be  in  force  from  and 
after  its  passage. 

FORM   OF  APPLICATION   FOR   REGISTRATION. 

To  the  Secretary  of  the  Commonwealth  of  Virginia: 

(Name  and  Address)  in  whose  name  and  behalf  this  application 
for  the  registry  in  the  State  of  Virginia,  of  the  label,  trademark,  term, 
design,  device  or  form  of  advertising  hereinafter  indicated  is  made, 
in  order  to  secure  to  the  applicant  the  exclusive  use  of  the  same  for 
the  purpose  of  designating,  making  known  and  distinguishing  the 
articles  hereinafter  described,  do  declare,  that: 

The  name  of  the  applicant  in  whose  name  and  behalf  this  registry 
is  made,  is  as  above  set  forth: 

The  applicant  has  heretofore  adopted  and  used,  and  has  the  right  to 
use,  said  label,  trademark,  design,  device  or  form  of  advertising,  for 
the  purpose  of  designating,  making  known  or  distinguishing  the  articles 
hereinafter  designated,  and  that  no  other  person,  firm,  association, 
union  or  corporation,  has  the  right  to  such  use,  either  in  the  identical 
form,  or  in  any  such  near  resemblance  thereto  as  may  be  calculated 
to   deceive. 

The  class  of  articles,  and  the  description  thereof,  to  which  such 
label,  trademark,  term,  design,  device  or  form  of  advertising  is  ap- 
propriated, are  the  following,  to-wit:  (Insert  fac-simile  or  coun- 
terpart of  trademark  or  label.) 

The  fac-simile  or  counterpart  herewith  filed  is  true  and  correct. 


Witness  the  following  signature  this,  the day  of 19C — ■ 


State  of of ss. 

I, a  notary  public  for  the of ,  in  the  State  afore- 
said,  do   hereby  certify  that    (If   officer  of  corporation   or  partner  so 

state)  this  day  personally  appeared  before  me  in  my  and  State 

aforesaid  and  made  oath  that  the  statements  contained  in  the  fore- 
going writing  bearing  date  on  the day  of ,  190 — ,  are  true 

and  that  he  is  duly  authorized  to  make  this  oath. 

Given  under  my  hand  and  oflEicial  seal,  this,  the day  of , 

190— 


STATE   TRADEMARK    STATUTES.  713 


WASHINGTON. 

Nichols,    "Existing   Corporation   Laws   of   the   State   of   Washington," 

1905.  page  160. 

1.  Counterfeiting  Trademarks  Prohibited.  When- 
ever any  person,  or  any  association  or  union  of  work- 
ingmen  has  heretofore  adopted  or  used,  or  shall  here- 
after adopt  or  use,  and  has  filed  as  hereinafter  provided 
any  label,  trademark,  term,  design,  device  or  form  of 
advertisement  for  the  purpose  of  designating,  making 
known,  or  distinguishing  any  goods,  wares,  merchandise 
or  other  product  of  labor,  as  having  been  made,  manu- 
factured, produced,  prepared,  packed  or  put  on  sale  by 
such  person  or  association  or  union  of  workingmen  or  by 
a  member  or  members  of  such  association  or  union,  it 
shall  be  unlawful  to  counterfeit  or  imitate  such  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment, or  to  use,  sell,  offer  for  sale,  or  in  any  way  utter 
or  circulate  any  counterfeit  or  imitation  of  any  such 
label,  trademark,  term,  design,  device  or  form  of  adver- 
tisement. 

2.  Penalty.  ^Vlioever  counterfeits  or  imitates  any 
such  label,  trademark,  term,  design,  device  or  form  of 
advertisement,  or  sells,  offers  for  sale,  or  in  any  way 
utters  or  circulates  any  counterfeit  or  imitation  of  any 
such  label,  trademark,  term,  design,  device  or  foiTii  of 
advertisement;  or  keeps  or  has  in  his  possession,  with 
intent  that  the  same  shall  be  sold  or  disposed  of,  any 
goods,  wares,  merchandise  or  other  product  of  labor  to 
which  or  on  which  any  such  counterfeit  or  imitation  is 
printed,  painted,  stamped  or  impressed;  or  knowingly 
sells  or  disposes  of  any  goods,  wares,  merchandise  or 
other  product  of  labor  contained  in  any  box,  ease,  can 
or  package,  to  which  or  on  which  any  such  counterfeit 
or  imitation  is  attached,  affixed,  printed,  painted,  stamped 


71-1  APPENDIX  H. 

or  impressed ;  or  keeps  or  has  in  his  possession,  with  in- 
tent that  the  same  shall  be  sold  or  disposed  of,  any 
goods,  wares,  merchandise  or  other  product  of  labor,  in 
any  box,  cases,  can  or  package,  to  which  or  on  which 
any  such  counterfeit  or  imitation  is  attached,  affixed, 
printed,  painted,  stamped  or  impressed,  shall  be  pun- 
ished by  a  fine  of  not  more  than  one  hundred  dollars,  or  by 
imprisonment  for  not  more  than  three  months. 

3.  Filing  and  Eecoeding.  Every  such  person,  asso- 
ciation or  union,  that  has  heretofore  adopted  or  used, 
or  shall  hereafter  adopt  or  use,  a  label,  trademark,  term, 
design,  device  or  form  of  advertisement,  as  provided  in 
section  one  of  this  act,  may  file  the  same  for  record  in 
the  office  of  the  Secretary  of  State  by  leaving  two  copies, 
counterparts  or  fac-similes  thereof,  with  said  Secretary, 
and  by  filing  therewith  a  sworn  application  specifying  the 
name  or  names  of  the  person,  association  or  union  on 
whose  behalf  such  label,  trademark,  term,  design,  device 
or  form  of  advertisement  shall  be  filed,  the  class  of  mer- 
chandise, and  a  description  of  the  goods  to  which  it  has 
been,  or  is  intended  to  be  appropriated,  stating  that  the 
party  so  filing,  or  on  whose  behalf  such  label,  trademark, 
term,  design,  device  or  form  of  advertisement  shall  be 
filed,  has  the  right  to  the  use  of  the  same,  that  no  other 
person,  firm,  association,  union  or  corporation  has  the 
right  to  such  use  either  in  the  identical  form  or  in  any 
such  near  resemblance  thereto  as  may  be  calculated  to 
deceive,  and  that  the  fac-simile  or  counterparts  filed 
therewith  are  true  and  correct.  There  shall  be  paid,  for 
such  filing  and  recording,  a  fee  of  five  dollars.  Said 
Secretary  shall  deliver  to  such  person,  association  or 
union  so  filing  or  causing  to  be  filed  any  such  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment, so  many  duly  attested  certificates  of  the  record- 
ing of  the  same  as  such  person,  association  or  union 
may  apply  for,  for  each  of  which  certificates  said 
Secretary    shall    receive    a    fee    of    two    dollars.      Any 


STATE  TRADEilARK  STATUTES.  715 

such  certificate  of  record  shall,  in  all  suits  and  pros- 
ecutions under  this  act,  be  sufficient  proof  of  the 
adoption  of  such  label,  trademark,  tenn,  design,  de- 
vice or  fonn  of  advertisement.  Said  Secretary  of 
State  shall  not  record  for  any  person,  union  or  asso- 
ciation, any  label,  trademark,  term,  design,  device  or 
form  of  advertisement  that  would  probably  be  mistaken 
for  any  label,  trademark,  term,  design,  device  or  form 
of  advertisement  theretofore  filed  by  or  on  behalf  of  any 
other  person,  union  or  association. 

4.  Fraudulent  Filing,  etc.— Penalty.  Any  person 
who  shall,  for  himself  or  on  Ijehalf  of  any  other  person, 
assQciation  or  union,  procure  the  filing  of  any  label, 
trademark,  term,  design  or  form  of  advertisement  in 
the  office  of  the  Secretary  of  State,  under  the  provisions 
of  this  act,  by  making  any  false  or  fraudulent  representa- 
tions or  declaration,  verbally  or  in  writing,  or  by  any 
fraudulent  means,  shall  be  liable  to  pay  any  damages 
sustained  in  consequence  of  any  such  filing,  to  be  re- 
covered by  or  on  behalf  of  the  party  injured  thereby, 
in  any  court  having  jurisdiction,  and  shall  be  punished 
by  a  fine  not  exceeding  one  hundred  dollars  or  by  im- 
prisonment not  exceeding  three  months. 

5.  Enjoin  Use,  etc.  Every  such  person,  association 
or  union  adopting  or  using  a  label,  trademark,  term,  de- 
sign, device  or  form  of  advertisement  as  aforesaid,  may 
proceed  by  suit  to  enjoin  the  manufacture,  use,  display 
or  sale  of  any  counterfeits  or  imitations  thereof,  and  all 
courts  of  competent  jurisdiction  shall  grant  injunctions 
to  restrain  such  manufacture,  use,  display  or  sale,  and 
may  award  the  complainant  in  any  such  suit  damages 
resulting  from  such  manufacture,  use,  sale  or  display, 
as  may  be  by  the  said  court  deemed  just  and  reasonable, 
and  shall  require  the  defendants  to  pay  to  such  person, 
association  or  union  all  profits  derived  from  such  wrong- 
ful manufacture,  use,  display  or  sale;  and  such  court 
shall  also  order  that  all  such  counterfeits  or  imitations  in 
the  possession  or  under  the  control  of  any  defendant  in 


716  APPENDIX  H. 

sucli  cause  be  delivered  to  an  officer  of  the  court,  or  to 
the  complainant  to  be  destroyed. 

6.  Penalty  for  Unaut'horized  Use.  Every  person 
who  shall  use  or  display  the  genuine  label,  trademark, 
term,  design,  device  or  form  of  advertisement  of  any 
such  person,  association  or  union  in  any  manner,  not 
being  authorized  so  to  do  by  such  person,  union  or  asso- 
ciation, shall  be  deemed  guilty  of  a  misdemeanor,  and 
shall  be  jDunished  by  imprisonment  for  not  more  than 
three  months,  or  by  a  fine  of  not  more  than  one  hundred 
($100)  dollars.  In  all  cases  where  such  association  or 
union  is  not  incorporated,  suits  under  this  act  may  be 
commenced  and  prosecuted  by  an  officer  or  member  of 
such  association  or  union  on  behalf  of  and  for  the  use 
of  such  association  or  union. 

7.  Penalty  for  Use  of  Name  or  Seal.  Any  person 
or  persons  who  shall,  in  any  way,  use  the  name  or  seal 
of  any  such  person,  association  or  union  or  officer 
thereof,  in  and  about  the  sale  of  goods  or  otherwise,  not 
being  authorized  to  so  use  the  same,  shall  be  guilty  of  a 
misdemeanor,  and  shall  be  punishable  by  imprisonment 
for  not  more  than  three  months,  or  by  a  fine  of  not 
more  than  one  hundred  dollars. 

8.  Penalty  for  Defacing  or  Removing  Trademark, 
etc.  Any  person  using  the  trademark  so  adopted  and 
filed  by  any  such  person,  or  any  imitation  of  such  trade- 
mark, or  any  counterfeit  thereof;  or  who  shall,  in  any 
manner  mutilate,  deface,  destroy  or  remove  such  trade- 
mark from  any  goods,  wares,  merchandise,  article  or 
articles,  or  from  any  package  or  packages  containing 
the  same,  or  from  any  empty  or  second  hand  package 
which  has  contained  the  same  or  been  used  therefor,  with 
the  intention  of  using  such  empty  or  second  hand  pack- 
age, or  of  the  same  being  used  to  contain  goods,  wares, 
merchandise,  article  or  articles  of  the  same  general  char- 
acter as  those  for  which  they  were  first  used;  and  any 
person  who  shall  use  any  such  empty  or  second  hand 


STATE  TRADEMARK  STATUTES.  717 

package  for  the  purpose  aforesaid,  without  the  consent 
in  writing  of  the  person  whose  trademark  was  first  ap- 
plied thereto  or  placed  thereon  shall,  upon  conviction 
thereof,  be  fined  in  any  sum  not  less  than  one  hundred 
dollars,  or  by  imprisonment  for  not  more  than  three 
months,  and  the  goods,  wares,  merchandise,  article  or 
articles,  contained  in  any  second  hand  package  or  pack- 
ages shall  be  forfeited  to  the  original  user  of  such  pack- 
age or  packages  whose  trademark  was  first  applied 
thereto  or  placed  thereon.  The  violation  of  any  of  the 
above  provisions  as  to  each  particular  article  or  package 
shall  be  held  to  be  a  separate  offense. 

9.  "Pekson"  Defined.  The  word  "person"  in  this 
act  shall  be  construed  to  include  a  person,  co-partner- 
ship, corporation,  association  or  union  of  workingmen. 

Where  the  mark  in  litigation  has  not  been  registered 
under  §  3621,  Ballinger's  Annotated  Codes,  the  sufl&ciency 
of  a  complaint  for  the  infringement  of  the  mark  must 
be  adjudged  upon  the  principles  of  common  law. 

Woodcock  V.  Guy,  33  Wash.,  234,  74  Pac.  Rep.  358. 


WEST  VIRGINIA. 

ACT  of  1901. 
AN  ACT  providing  for  the  protection  of  union  labels  and  trademarks. 

1.  Whenever  any  person,  firm  or  corporation,  or  any 
association  or  union  of  workingmen,  has  heretofore 
adopted  or  used,  or  shall  hereafter  adopt  or  use,  any 
label,  trademark,  term,  design,  device  or  form  of  adver- 
tisement for  the  use  of  designating,  making  known,  or 
distinguishing  any  goods,  wares,  merchandise  or  other 
product  of  labor,  as  having  been  made,  manufactured, 
produced,  prepared,  packed  or  put  on  sale,  by  such  jier- 
son,  firm,  corporation  or  association  or  union  of  work- 
ingmen, or  by  a  member  or  members  of  such  association 


718  APPENDIX  H. 

or  union,  and  sliall  register  the  same  as  provided  in  sec- 
tion three  of  this  act,  it  shall  be  unlawful  to  knowingly 
counterfeit  or  imitate  such  label,  trademark,  term,  de- 
sign, device  or  form  of  advertisement,  or  to  knowingly 
use,  sell,  offer  for  sale,  or  in  any  way  utter  or  circulate 
any  counterfeit  or  imitation  of  any  such  label,  trademark, 
term,  design,  device  or  form  of  advertisement. 

2,  Whoever  so  knowingly  counterfeits  or  imitates  any 
such  registered  label,  trademark,  term,  design,  device  or 
form  of  advertisement;  or  knowingly  sells,  or  offers  for 
sale,  or  in  any  way  utters  or  circulates  any  counterfeit 
or  imitation  of  any  such  registered  label,  trademark, 
term,  design,  device  or  form  of  advertisement;  or  know- 
ingly keeps  or  has  in  his  possession,  with  intent  that 
the  same  shall  be  sold  or  disposed  of,  any  goods,  wares, 
merchandise  or  other  product  of  labor  to  which  or  on 
which  any  such  counterfeit  or  imitation  is  printed, 
l^ainted,  stamped  or  impressed;  or  knowingly  sells  or 
disposes  of  any  goods,  wares,  merchandise  or  other  pro- 
duct of  labor  contained  in  any  box,  case,  can  or  package 
to  which  or  on  which  any  such  counterfeit  or  imitation 
is  attached,  affixed,  printed,  painted,  stamped  or  im- 
pressed or  knowingly  keeps  or  has  in  his  possession, 
with  intent  that  the  same  shall  be  sold  or  disposed  of, 
any  goods,  wares,  merchandise  or  other  product  of  labor 
in  any  box,  case,  can  or  package,  to  which  or  on  which 
any  such  counterfeit  or  imitation  is  attached,  affixed, 
printed,  stamj^ed  or  impressed,  shall  be  punished  by  a 
fine  of  not  more  than  five  hundred  dollars  or  by  impris- 
onment for  not  more  than  three  months,  or  by  both  such 
fine  and  imprisonment. 

3.  Every  such  person,  firm,  corporation,  association  or 
union  that  has  heretofore  adopted  or  used,  or  shall  here- 
after adopt  or  use,  a  label,  trademark,  term,  design,  de- 
vice or  form  of  advertisement  as  provided  in  section  one 
of  this  act,  shall  register  the  same  by  filing  the  same  for 
record  in  the  office  of  the  secretary  of  state  by  leaving 


I 


STATE   TRADEMARK    STATUTES.  719 

two  copies,  counterparts  or  fac-similes  thereof,  with  said 
secretary  and  by  filing  therewith  a  sworn  application 
specifying  the  name  or  names  of  the  person,  association 
or  union  on  whose  behalf  such  lal^el,  trademark,  term, 
design,  device  or  form  of  advertisement,  shall  be  filed; 
the  class  of  merchandise  and  a  description  of  the  goods 
to  which  it  has  been  or  is  intended  to  be  approjjriated, 
stating  that  the  party  so  filing,  or  on  whose  behalf  such 
label,  trademark,  term,  design,  device  or  form  of  adver- 
tisement shall  be  filed,  has  the  right  to  use  the  same; 
that  no  other  person,  firm,  association  union  or  corpora- 
tion has  the  right  to  such  use,  either  in  the  identical 
form  or  in  any  such  near  resemblance  thereto  as  may 
be  calculated  to  deceive,  and  that  the  fac-similes  or  coun- 
teqiarts  filed  therewith  are  true  and  correct.  There  shall 
be  paid  for  such  filing  and  recording  a  fee  of  one  dollar. 
Said  secretary  shall  deliver  to  such  person,  association, 
or  union,  so  filing  or  causing  to  be  filed  any  such  label, 
trademark,  term,  design,  device  or  form  of  advertisement 
so  many  duly  attested  certificates  of  the  recording  of 
the  same  as  such  person,  finn,  corporation,  association  or 
union  may  apply  for,  for  each  of  which  certificates  said 
secretary  shall  receive  a  fee  of  one  dollar.  Any  such 
certificates  of  record  shall  in  all  suits  and  prosecutions 
under  this  act  be  sufficient  proof  of  the  adoption  of  such 
labels,  trademarks,  terms,  designs,  devices  or  forms  of 
advertisement.  Said  secretary  of  state  shall  not  record 
for  any  person,  union  or  association,  any  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement, 
that  would  probably  be  mistaken  for  any  label,  trade- 
mark, term,  design,  device  or  form  of  advertisement 
theretofore  filed  by  or  on  behalf  of  any  other  person, 
firm,  corporation,  union  or  association.  But  the  said  sec- 
retary  shall  file  and  record  under  this  act  any  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment, which  may  have  been  previously  filed  by  any  per- 
son,  firm,   corporation   or  any  association  or  union  of 


720  APPENDIX  H. 

workingmen,  provided  the  person,  firm,  corporation,  as- 
sociation or  union  seeking  to  file  and  record  under  this 
act  is  the  same  person,  firm,  corporation,  association  or 
union  that  previously  filed  or  recorded  the  same  label, 
trademark,  tenn,  design,  device  or  form  of  advertise- 
ment. 

4.  Any  person  who  shall  for  himself,  or  on  behalf  of 
any  other  person,  firm,  corporation,  association  or  union, 
procure  the  filing  of  any  label,  trademark,  tenn,  design 
or  form  of  advertisement,  in  the  office  of  the  secretary  of 
state  under  the  provisions  of  this  act,  by  making  any 
known  false  or  fraudulent  representations,  or  declara- 
tions, verbally  or  in  writing,  or  by  any  fraudulent  means, 
shall  be  liable  to  pay  any  damages  sustained  in  conse- 
quence of  any  such  filing  to  be  recovered  by  or  on  behalf 
of  the  party  injured  thereby  in  any  court  having  juris- 
diction, and  shall  be  punished  by  a  fine  not  exceeding 
five  hundred  dollars  or  by  imprisonment  not  exceeding 
three  months,  or  by  both  such  fine  and  imprisonment. 

5.  Ever}"  such  person,  firm,  corporation,  association 
or  union  adopting  or  using  any  such  registered  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment, as  aforesaid,  may  proceed  by  suit  for  damages  to 
enjoin  the  manufacture,  use,  display  or  sale  of  any  coun- 
terfeits or  imitations  thereof,  and  all  courts  of  compe- 
tent jurisdiction  shall  grant  injunctions  to  restrain  such 
manufacture,  use,  display  or  sale,  and  award  the  com- 
plainant in  any  such  suit  damages  resulting  from  such 
manufacture,  use,  sale  or  display,  as  may  be  by  the  said 
court  deemed  just  and  reasonable,  and  shall  require  the 
defendants  to  pay  such  person,  association  or  union,  all 
profits  derived  from  such  wrongful  manufacture,  use, 
sale  or  display;  and  such  court  shall  also  order  that  all 
such  counterfeits  or  imitations  in  the  possession  or  under 
the  control  of  any  defendant  in  such  cause  be  delivered 
to  an  ofiicer  of  the  court,  or  to  the  complainant,  to  be  de- 
stroyed. 


STATE  TRADEMARK  STATUTES,  721 

6.  Every  person,  firm,  corporation  or  union,  who  shall 
knowingly  use  or  dispay  the  genuine  label,  trademark, 
term,  design,  device  or  form  of  advertisement  of  any 
such  person,  firm,  corporation,  association  or  union  when 
registered  as  aforesaid,  in  any  manner,  not  being  author- 
ized so  to  do  by  such  person,  finu,  cori)oration,  associa- 
tion or  union,  shall  be  deemed  guilty  of  a  misdemeanor 
and  shall  be  punished  by  imprisonment  for  not  more  than 
three  months  or  by  a  fine  of  not  more  than  three  hun- 
dred dollars.  In  all  cases  where  such  association  or 
union  is  not  incorporated  suits  under  this  act  may  be 
commenced  and  prosecuted  by  any  officer  or  member  of 
such  association  or  union  on  behalf  of  and  for  the  use 
of  such  association  or  union. 

7.  Any  person,  firm,  corporation,  association,  or  union, 
who  shall  in  any  way  knowingly  use  the  name  or  seal  of 
any  such  person,  firm,  corporation,  association  or  union, 
or  officer  thereof,  in  and  about  the  sale  of  goods  or  other- 
wise, not  being  authorized  to  so  use  the  same,  shall  be 
guilty  of  a  misdemeanor  and  shall  be  punished  by  im- 
prisonment for  not  more  than  three  months  or  by  a  fine 
of  not  more  than  five  hundred  dollars. 

8.  Nothing  contained  in  this  act  shall  be  construed  as 
affecting  or  impairing  any  right  or  remedy  at  law  or  in 
equity  now  existing  for  the  j^rotection  of  any  label, 
trademark,  term,  design,  device  or  form  of  advertise- 
ment, whether  or  not  the  same  is  registered  under  the 
provisions  hereof. 

The  Act  of  1882  relates  to  timber  trade. 

Another  Act  of  1889  relates  to  the  protection  of  persons 
and  corporations  engaged  in  manufacturing  and  selling 
mineral  waters,  malt  liquors  and  other  beverages. 


46 


722  APPENDIX  H. 

WISCONSIN. 

ACT  of  MAY  13,  1901. 

CHAPTER  360. 

AN  ACT  to  provide  for  registration  of  trademarks  and  other  marks  of 
ownership  and  to  prevent  the  unlawful  use  and  disposal  of  articles 
marked  therewith. 

Section  1.  Filing  of  description  ivitli  secretary  of 
state;  publication  of;  fees.— Any  and  all  persons  or  cor- 
porations who  may  be  the  owners  of  cans,  tubs,  firkins, 
boxes,  bottles,  casks,  barrels,  kegs,  cartons,  tanks,  foun- 
tains, vessels  or  containers  with  his,  her,  its  or  their 
names,  brands,  designs,  trademarks,  devices,  or  other 
marks  of  ownership  stamped,  impressed,  labelled,  blown 
in  or  otherwise  marked  thereon,  may  file  with  the  secre- 
tary of  state  and  also  with  the  register  of  deeds  of  any 
county  in  which  any  such  person  or  persons  or  corpora- 
tions may  have  his,  her,  its  or  their  principal  place  of 
business,  a  written  statement  or  description  verified  by 
afiidavit  of  such  owner  or  his,  her,  or  its  agent,  of  the 
names,  brands,  designs,  trademarks,  devices  or  other 
marks  of  ownership  so  used  by  him,  her,  it  or  them,  and 
of  the  said  article  or  articles  upon  which  the  same  are 
used,  or  if  such  principal  place  of  business  shall  be  with- 
out the  state,  then  such  written  statement  or  description 
so  verified  may  be  filed  with  the  register  of  deeds  of  any 
county  of  this  state.  Said  statement  shall  be  published 
once  a  week  for  three  successive  weeks  in  a  newspaper 
printed  in  the  English  language  and  of  general  circula- 
tion in  said  county,  a  copy  of  which  publication,  proved 
in  the  same  manner  as  proof  of  publication  is  now  re- 
quired to  be  made  by  law,  when  no  special  mode  of 
proving  the  same  is  provided,  shall  also  be  filed  with 
the  secretary  of  state  and  with  such  register  of  deeds. 
All  such  written  statements  or  descriptions  and  all  such 
certificates  of  publication  so  filed  with  the  register  of 


STATE  TRADEMARK  STATUTES.  723 

deeds  shall  be  recorded  at  large  by  him  in  a  book  to  be 
kept  by  him,  and  such  book  shall  be  subject  at  all  rea- 
sonable hours  to  the  inspection  of  all  persons  who  may 
choose  to  inspect  the  same.  The  secretary  of  state  and 
the  register  of  deeds  shall  deliver  to  any  person  who 
may  apply  therefor  copies  of  all  such  w^ritten  statements 
or  descriptions  of  names,  brands,  designs,  trademarks, 
devices,  or  other  marks  of  ownership  and  of  all  certifi- 
cates of  publication  so  filed  with  them,  duly  certified  to 
by  them  in  the  usual  manner,  and  such  certified  copies 
shall  be  admissible  in  evidence  in  all  prosecutions  under 
this  act,  and  shall  be  prima  facie  evidence  that  the  pro- 
visions of  this  section  have  been  complied  with,  and  of 
the  title  of  the  owner  or  owners  named  therein,  to  the 
property  upon  which  the  name,  brand,  design,  trademark, 
device  or  other  marks  of  ownership  of  such  owner  or 
owners  may  appear  as  described  therein.  The  secretary 
of  state  and  the  register  of  deeds  shall  each  receive  a 
fee  of  one  (1)  dollar  for  each  statement  and  certificate 
of  publication  filed  and  also  a  fee  of  one  (1)  dollar  for 
each  certified  copy  of  such  statement  and  certificate 
of  publication,  to  be  paid  for  by  the  person  filing  or  ap- 
plying for  the  same. 

Sec.  2.  Sale  of  receptacle  hy  other  than  oirtier  pro- 
hibited.—It  is  hereby  declared  to  be  unlawful  for  any 
person  or  persons  or  corporation  without  the  written 
consent  of  the  owner  or  owners  thereof,  to  hereafter  keep 
for  sale  any  can,  tub,  firkin,  box,  bottle,  cask,  barrel,  keg, 
carton,  tank,  fountain,  vessel  or  container  so  marked  or 
distinguished  as  aforesaid,  of  which  a  description  shall 
have  been  filed  and  published  as  provided  in  section  1  of 
this  act,  or  to  use  or  fill  with  any  similar  substance,  com- 
modity or  product  as  originally  contained  therein  for  the 
sale  of  such  substance,  commodity  or  product,  any  such 
can,  tub,  firkin,  box,  bottle,  cask,  barrel,  keg,  carton, 
tank,  fountain,  vessel  or  container  or  to  receive,  take, 
buy,  sell,  or  dispose  of  or  trafiic  in  any  such  can,  tub, 


724  APPENDIX  H. 

firkin,  bottle,  box,  cask,  barrel,  keg,  carton,  tank,  foun- 
tain, vessel  or  container,  or  to  deface,  erase,  obliterate, 
cover  up  or  otherwise  remove  or  conceal  any  such  name, 
brand,  design,  trademark,  device  or  other  mark  thereon, 
for  the  purpose  of  destroying  or  removing  the  evidence 
of  the  ownership  of  such  article. 

Sec.  3.  Use  of  receptacle  by  other  than  owner;  as  to 
junk  dealers.— The  using  by  any  person  or  persons  or 
corporation  other  than  the  owner  or  owners  thereof,  or 
his,  her,  its  or  their  agent,  of  any  such  can,  tub,  firkin, 
box,  bottle,  cask,  barrel,  keg,  carton,  tank,  fountain,  vessel 
of  container,  for  the  sale  therein  of  any  substance,  commo- 
dity or  i^roduct,  other  than  that  originally  therein  con- 
tained, or  the  buying,  selling,  or  trafficking  in  any  such 
can,  tub,  firkin,  box,  bottle,  cask,  barrel,  keg,  carton,  tank, 
fountain,  vessel  or  container,  or  the  fact  that  any  junk 
dealer  or  dealers  in  cans,  tubs,  firkins,  boxes,  bottles, 
casks,  barrels,  kegs,  cartons,  tanks,  fountains,  vessels  or 
containers,  shall  have  in  his  or  her  possession  any  such 
can,  tub,  firkin,  box,  bottle,  cask,  barrel,  keg,  carton,  tank, 
fountain,  vessel  or  container,  so  marked  or  stamped,  and 
a  description  of  which  shall  have  been  filed  and  pub- 
lished as  provided  in  section  1  of  this  act,  shall  be,  and 
it  hereby  is,  declared  to  be,  prima  facie  evidence  that 
such  using,  buying,  selling  or  trafficking  in  or  possession 
of  is  unlawful  within  the  meaning  of  this  act. 

Sec.  4.  Forfeiture  for  violation. — Any  person  or  per- 
sons or  corporation  or  any  officer  or  agent  of  any  cor- 
poration acting  for  or  in  the  name  of  such  corporation 
who  shall  violate  any  of  the  provisions  of  this  act,  shall 
forfeit  not  less  than  five  dollars  ($5.00)  nor  more  than 
fifty  dollars  ($50.00)  for  the  first  offense,  and  not  less 
than  fifty  dollars ($50.00)  nor  more  than  two  hundred 
dollars  ($200.00)  for  each  subsequent  offense.  All  for- 
feitures collected  under  the  provisions  of  this  act  shall  be 
paid  into  the  common  school  fund. 

Sec.  5.     Rights  of  oivner  to  injunction. — Every  such 


STATE  TRADEMARK  STATUTES.  725 

person  or  corporation  having  complied  with  the  pro- 
visions of  this  act  as  aforesaid,  may  proceed  hy  suit  to 
enjoin  any  other  person  or  corporation  from  filing  [fill- 
ing] with  any  substance,  commodity  or  product  for  the 
sale  therein  of  such  substance,  commodity  or  product  any 
can,  tub,  firkin,  box,  bottle,  cask,  barrel,  keg,  carton, 
tank,  fountain,  vessel  or  container,  so  marked  or  distin- 
guished as  aforesaid,  or  from  buying,  selling,  using,  or 
disposing  of  or  trafficking  in  the  same,  or  from  defacing, 
erasing,  obliterating,  covering  up  or  otherwise  removing 
any  such  name,  brand,  design,  trademark,  device  or  other 
marks  or  ownership  thereon,  for  the  purpose  of  destroy- 
ing or  removing  the  evidence  of  the  ownership  of  such 
article,  and  all  courts  having  equity  jurisdiction  shall 
have  power  to  grant  injunctions  according  to  the  course 
and  principles  of  courts  of  equity,  to  restrain  such  filing 
[filling]  for  sale  or  such  buying,  selling,  giving  away, 
using  or  disposing  of,  or  trafficking  in  or  such  defacing, 
erasing,  obliterating,  covering  up,  or  otherwise  removing 
or  the  violation  of  any  right  acquired  under  the  provis- 
ions of  this  act,  and  upon  a  decree  being  rendered  in  any 
such  case  against  the  defendant,  the  complainant  shall 
be  entitled  to  recover  the  damages  the  complainant  may 
have  sustained  by  reason  of  the  said  acts  of  the  defen- 
dant and  the  court  shall  assess  the  same  or  cause  the 
same  to  be  assessed  under  its  direction. 

Sec.  6.    This  act  shall  take  effect  and  be  in  force  from 
and  after  its  passage  and  publication. 


726  APPENDIX  n. 

WYOMING. 

Revised  Statutes,  1899. 

Section  2526.  Any  person,  association  or  union  may- 
adopt  a  label,  trademark,  stamp  or  form  of  advertise- 
ment not  previously  owned  or  adopted  by  any  other  per- 
son, association  or  union,  and  may  file  the  same  for  rec- 
ord in  the  office  of  the  secretary  of  state,  by  leaving  two 
copies,  counterparts  or  fac-similes  thereof,  with  said  sec- 
retaiy;  and  shall  file  therewith  a  certificate  specifying 
the  name  or  names  of  the  person,  association  or  union 
so  filing  such  label,  trademark,  stamp  or  form  of  adver- 
tisement, his  or  its  residence,  location  or  place  of  busi- 
ness, the  class  of  merchandise  and  the  particular  descrip- 
tion of  goods  comprised  in  such  class  to  which  it  has 
been  or  is  intended  to  be  appropriated,  and  the  length  of 
time,  if  any,  during  which  it  has  been  in  use.  Such  cer- 
tificate shall  be  accompanied  by  a  written  declaration, 
verified  under  oath  by  the  person  or  some  officer  of  the 
association  or  union  by  whom  it  is  filed,  to  the  effect  that 
the  party  so  filing  such  label,  trademark,  stamp  or  form 
of  advertisement  has  a  right  to  the  use  of  the  same,  and 
that  no  other  person,  firm,  association,  union  or  corpora- 
tion has  the  right  to  such  use,  either  in  the  identical  form 
or  in  any  such  near  resemblance  thereto  as  may  be  calcu- 
lated to  deceive,  and  that  the  fac-similes,  copies  or  coun- 
terparts filed  therewith  are  true  and  correct.  There 
shall  be  paid  for  such  filing  the  fee  of  five  dollars.  Said 
secretary  shall  deliver  to  such  person,  association  or 
union  so  filing  the  same  a  duly  attested  certificate  of  the 
record  of  the  same,  for  which  he  shall  receive  the  fee  of 
five  dollars.  Such  certificate  of  record,  shall  in  all  suits 
and  prosecutions  under  this  act,  be  sufficient  proof  of  the 
adoption  of  such  label,  stamp,  trademark  or  form  of  ad- 
vertisement.    No   label,   trademark,   stamp   or  form  of 


STATE   TRADEMARK    STATUTES.  727 

advertisement  shall  be  recorded  that  would  reasonably 
be  mistaken  for  a  label,  trademark,  stamp  or  form  of 
advertisement  already  on  record. 

Sec.  2527.  The  secretary  of  state  is  autliorizod  to 
make  rules  and  regulations,  and  preserilje  forms  for  the 
filing  of  labels,  trademarks  and  forms  of  advertisement 
under  the  provisions  of  this  act. 

Sec.  2528.  Tlie  owner  of  any  such  label,  trademark^ 
stamp  or  form  of  advertisement  recorded  as  provided  in 
section  one  of  this  act,  may  proceed  by  suit  to  enjoin  the 
manufacture,  use  or  sale  of  any  such  counterfeits  or  imi- 
tations, and  all  courts  having  jurisdiction  thereof  to 
grant  injunctions  to  restrain  such  manufacture,  use  or 
sale,  and  will  award  the  complainant  in  such  suit  such 
damages  resulting  from  such  wrongful  manufacture,  use 
or  sale  as  may  by  said  court  be  deemed  just  and  reason- 
able, and  shall  require  the  defendant  to  pay  to  such  per- 
son, association  or  union  the  profits  derived  from  such 
wrongful  manufacture,  use  or  sale;  and  such  court  may 
also  order  that  all  such  counterfeits  or  imitations  in  the 
possession  or  under  the  control  of  any  defendant  in  such 
case  be  delivered  to  an  officer  of  the  court,  or  to  the  com- 
plainant, to  be  destroyed.  In  all  cases  where  such  asso- 
ciation or  union  is  not  incorporated,  suits  under  this  act 
may  be  commenced  and  prosecuted  by  an  officer  of  such 
association  or  union,  on  behalf  of  and  for  the  use  of 
such  association  or  union,  and  eveiy  member  of  such 
association  or  union  shall  be  liable  for  costs  in  any  such 
proceedings. 

Sec.  2529.  Eveiy  person  who,  without  authority  from 
the  owner  of  a  label,  trademark,  stamp  or  form  of  adver- 
tisement recorded  as  aforesaid,  shall  make  or  use  any 
counterfeit  or  imitation  of  such  lalwl,  trademark,  stamp 
or  form  of  advertisement,  knowing  the  same  to  be  coun- 
terfeit or  imitation,  and  every  person  who,  without  au- 
thority from  such  owner,  shall  affix,  impress  or  use  such 
label,  trademark,  stamp  or  form  of  advertisement  upon 


728  APPENDIX  H. 

any  goods  shall  be  punished  by  a  fine  not  exceeding  two 
hundred  dollars,  or  by  imprisonment  not  exceeding  one 
year,  or  by  both  such  fine  and  imprisonment. 

Sec.  2530.  Every  person  who  shall  sell  goods  upon 
which  such  label,  trademark,  stamp  or  form  of  advertise- 
ment recorded  as  aforesaid,  or  any  counterfeit  or  imita- 
tion thereof,  shall  be  unlawfully  impressed,  affixed  or 
used,  shall  be  punished  by  a  fine  not  exceeding  two  hun- 
dred dollars,  or  by  imprisonment  not  exceeding  one  year, 
or  by  both  such  fine  and  imprisonment,  unless  such  per- 
son shall  show  that  at  the  time  such  goods  came  into  his 
possession  he  did  not  know  that  the  impression,  affixing 
or  use  of  such  label,  trademark,  stamp  or  form  of  adver- 
tisement was  unlawful. 

Sec.  2531.  In  any  suit  or  prosecution  under  the  pro- 
visions of  this  act  the  defendant  may  show  that  he  or  it 
was  the  owner  of  such  label,  trademark  or  form  of  ad- 
vertisement, prior  to  its  being  filed  under  the  provisions 
of  this  act,  and  that  it  has  been  filed  wrongfully  or  with- 
out right  by  some  other  person,  association  or  union. 

Sec.  2532.  This  act  shall  not  be  construed  as  to  apply 
to  brands,  marks  or  tags  on  live  stock. 


I 


APPENDIX   I. 

CANADIAN    TRADEMARK    AND    DESIGN    ACT. 
Revised  Statutes,  1886. 
CHAPTER  63. 

SHORT    TITLE. 

1.  This  act  may  be  cited  as  '^The  Trademark  and  De- 
sign Act."    42  v.,  c.  22,  s.  40. 

APPLICATION    OF    ACT. 

2.  Sections  three  to  twenty-one  of  this  act,  both  in- 
clusive, apply  only  to  trademarks,  and  sections  twenty- 
two  to  thirty-eight,  both  inclusive,  apply  only  to  indus- 
trial designs.    42  V.,  c.  23,  s.  37. 

TRADEMARKS. 

3.  All  marks,  names,  brands,  labels,  packages  or  other 
business  devices,  which  are  adopted  for  use  by  any  j>er- 
son  in  his  trade,  business,  occupation  or  calling,  for  the 
purpose  of  distinguishing  any  manufacture,  product  or 
article  of  any  description  manufactured,  produced,  com- 
pounded, packed  or  offered  for  sale  by  him— applied  in 
any  manner  whatever  either  to  such  manufacture,  pro- 
duct or  article,  or  to  any  package,  parcel,  case,  box  or 
other  vessel  or  receptacle  of  any  description  whatsoever 
containing  the  same,  shall  for  the  pui'pose  of  this  act, 
be  considered  and  known  as  trademarks,  and  may  be 
registered  for  the  exclusive  use  of  the  person  registering 
the  same  in  the  manner  herein  provided;  and  thereafter 
such  person  shall  have  the  exclusive  right  to  use  the 
same  to  designate  articles  manufactured  or  sold  by  him: 

729 


730  APPENDIX  1. 


2.  Timber  or  lumber  of  any  kind  upon  which  labour 
has  been  ex^Deuded  by  any  person  in  his  trade,  business, 
occupation  or  calling,  shall,  for  the  purposes  of  this  act, 
be  deemed  a  manufacture,  product  or  article.  42  V.,  c. 
22,  s.  8. 

4.  A  trademark  may  be  general  or  specific,  according 
to  the  use  to  which  it  is  applied  or  intended  to  be  applied 
by  the  proprietor  thereof: 

{a.)  A  general  trademark  is  one  used  in  connection 
with  the  sale  of  various  articles  in  which  the  proprietor 
deals  in  his  trade,  business,  occupation  or  calling  gener- 
ally; 

{h.)  A  specific  trademark  is  one  used  in  connection 
with  the  sale  of  a  class  of  merchandise  of  a  particular 
description.    42  V.,  c.  22,  s.  9. 

5.  A  register  of  trademarks  shall  be  kept  at  the  De- 
l^artment  of  Agriculture,  in  which  any  proprietor  of  a 
trademark  may  have  the  same  registered,  on  complying 
with  the  provisions  of  this  act.    42  V.,  c.  22,  s.  1. 

6.  The  Minister  of  Agriculture  may,  from  time  to 
time,  subject  to  the  approval  of  the  Governor  in 
Council,  make  rules  and  regulations  and  adopt  forms  for 
the  purposes  of  this  act,  as  respects  trademarks;  and 
such  rules,  regulations  and  forms  circulated  in  print,  for 
the  use  of  the  public,  shall  be  deemed  to  be  correct  for 
the  purposes  of  this  act;  and  all  documents  executed 
according  to  the  same  and  accepted  by  the  Minister,  shall 
be  deemed  to  be  valid  so  far  as  relates  to  official  proceed- 
ings under  this  act.    42  V.,  c.  22,  s.  2. 

7.  The  Minister  of  Agriculture  may  cause  a  seal  to  be 
made  for  the  purposes  of  this  act;  and  may  cause  to  be 
sealed  therewith  trademarks  and  other  instruments,  and 
copies  of  such  trademarks  and  other  instruments,  pro- 
ceeding from  his  office  in  relation  to  trademarks.  42  V., 
c.  22,  s.  3. 

8.  The  proprietor  of  a  trademark  may  have  it  regis- 
tered on  forwarding  to  the  Minister  of  Agriculture,  to- 


CANADIAN    TR.U)EMARK    AND    DESIGN    ACT.  731 

gether  with  the  fee  hereinafter  mentioned,  a  drawing  and 
description  in  duijlicate  of  such  trademark,  and  a  decla- 
ration that  the  same  was  not  in  use  to  his  knowledge  by 
any  other  person  than  himself  at  the  time  of  his  adop- 
tion thereof.    42  V.,  c.  22,  s.  6. 

9.  Every  proprietor  of  a  trademark  who  applies  for 
its  registration  shall  state  in  his  application  whether  the 
said  trademark  is  intended  to  be  used  as  a  general  trade- 
mark or  as  a  specific  trademark.    42  V.,  c.  22,  s.  11. 

10.  Before  any  action  is  taken  in  relation  to  an  appli- 
cation for  registering  a  trademark,  the  following  fees 
shall  be  paid  to  the  Minister  of  Agriculture,  that  is  to 
say:— 

On  every  application  to  register  a  general  trademark,  including 

certificate $30  00 

On  every  applicaiton  to  register  a  specific  trademark,  including 

certificate  25  00 

On  every  application  for  the  renewal  of  the  registration  of  a  spe- 
cific trademark,  including  certificate 20  00 

For  copy  of  each  certificate  of  registration,  separate  from  the  re- 
turn of  the  duplicate 1  00 

For  the  recording  of  an  assignment 2  00 

For  office  copies  of  documents,  not  above  mentioned,  for  every 

hundred  words  or  for  a  fraction  thereof 0  50 

For  each  copy  of  any  drawing  or  emblematic  trademark,  the  rea- 
sonable expenses  of  preparing  the  same, — 

And  such  fees  shall  be  paid  over  by  the  Minister  of 
Agriculture  to  the  Minister  of  Finance  and  Receiver 
General : 

2.  If  the  Minister  of  Agriculture  refuses  to  register 
the  trademark  for  which  application  is  made,  the  fee 
shall  be  returned  to  the  applicant  or  his  agent,— less  the 
sum  of  five  dollars,  which  shall  be  retained  as  compensa- 
tion for  office  exi:)enses.    42  V.,  c.  22,  s.  12. 

11.  The  Minister  of  Agriculture  may  refuse  to  regis- 
ter any  trademark  in  the  following  cases:  — 

{a.)  If  he  is  not  satisfied  that  the  applicant  is  un- 
doubtedly entitled  to  the  exclusive  use  of  such  trade- 
mark ; 


732  APPENDIX  I. 

(b.)  If  the  trademark  proposed  for  registration  is 
identical  with  or  resembles  a  trademark  already  regis- 
tered ; 

(c.)  If  it  appears  that  the  trademark  is  calculated  to 
deceive  or  mislead  the  public; 

(d.)  If  the  trademark  contains  any  immorality  or  scan- 
dalous figure; 

(e.)  If  the  so-called  trademark  does  not  contain  the 
essentials  necessary  to  constitute  a  trademark,  properly 
speaking. 

2.  The  Minister  of  Agriculture  may,  however,  if  he 
thinks  fit,  refer  the  matter  to  the  Exchequer  Court  of 
Canada,  and  in  that  event  such  court  shall  have  juris- 
aiction  to  hear  and  determine  the  matter,  and  to  make  an 
order  determining  whether  and  subject  to  what  condi- 
tions, if  any,  registration  is  to  be  permitted.  54-55  V., 
e.  35. 

12.  The  Exchequer  Court  of  Canada  may  on  the  infor- 
mation of  the  Attorney-General,  or  at  the  suit  of  any 
person  aggrieved  by  any  omission,  without  sufficient 
cause,  to  make  any  entry  in  the  registry  of  trademarks, 
or  by  an  entry  made  therein  without  sufficient  cause, 
make  such  order  for  making,  expunging  or  varying  the 
entry  as  the  court  thinks  fit,  or  the  court  may  refuse 
the  application,  and  in  either  case  may  make  such  order 
with  respect  to  the  costs  of  the  proceedings  as  the  court 
thinks  fit: 

2.  The  said  court  may,  in  any  proceeding,  under  this 
section,  decide  any  question  that  may  be  necessary  or 
expedient  to  decide  for  the  rectification  of  such  register: 

3.  The  registered  proprietor  of  any  registered  trade- 
mark may  apply  to  the  Exchequer  Court  of  Canada  for 
leave  to  add  to  or  alter  such  mark  in  any  particular,  not 
being  an  essential  particular,  and  the  court  may  refuse 
or  grant  leave  on  such  terms  as  it  may  think  fit: 

4.  Notice  of  any  intended  application  to  the  court 
under  the  last  preceding  sub-section  of  this  section  shall 


CAN2U)IAN    TRADEMARK    AND    DESIGN    ACT.  733 

be  given  to  the  Minister  of  Agriculture,  and  he  shall  be 
entitled  to  be  heard  on  the  ai)plication : 

5.  A  certified  copy  of  every  order  of  the  court  for  the 
making,  expunging  or  vaiying  of  any  entry  in  the  reg- 
ister of  trademarks,  or  for  adding  to  or  altering  any 
registered  trademark  shall  be  transmitted  to  the  Minister 
of  Agriculture  by  the  registrar  of  the  court,  and  such 
register  shall  thereupon  be  rectified  or  altered  in  con-* 
formity  with  such  order,  or  the  purport  thereof  shall 
otherwise  be  duly  entered  in  the  register,  as  the  case 
may  be.    54-55  V.,  c.  35. 

13.  On  compliance  with  the  requirements  of  this  act 
and  of  the  rules  hereinbefore  provided  for,  the  Minister 
of  Agriculture  shall  register  the  trademark  of  the  pro- 
prietor so  applying,  and  shall  return  to  the  said  proprie- 
tor one  copy  of  the  drawing  and  description  with  a  cer- 
tificate signed  by  the  Minister  or  the  deputy  of  the  Min- 
ister of  Agriculture  to  the  effect  that  the  said  trademark 
has  been  duly  registered  in  accordance  with  the  provis- 
ions of  this  act;  and  the  day,  month  and  year  of  the 
entry  of  the  trademark  in  the  register  shall  also  be  set 
forth  in  such  certificate;  and  every  such  certificate,  pur- 
porting to  be  so  signed,  shall  be  received  in  all  courts  in 
Canada  as  prima  facie  e\'idence  of  the  facts  therein  al- 
leged without  proof  of  the  signature.    42  V.,  c.  22,  s.  7. 

14.  A  general  trademark  once  registered  and  destined 
to  be  the  sign  in  trade  of  the  proprietor  thereof  shall  en- 
dure without  limitation: 

2.  A  specific  trademark,  when  registered,  shall  endure 
for  the  term  of  twenty-five  years,  but  may  be  renewed 
before  the  expiration  of  the  said  tenn  by  the  proprietor 
thereof,  or  by  his  legal  representative,  for  another  term 
of  twenty-five  years,  and  so  on  from  time  to  time;  but 
every  such  renewal  shall  be  registered  before  the  expira- 
tion of  the  current  term  of  twenty-five  years.  42  V.,  c. 
22,  s.  10. 

15.  Any  person  who  has  registered  a  trademark  may 


734  APPENDIX  I. 

petition  for  the  cancellation  of  the  same,  and  the  Minis- 
ter of  Agriculture  may,  on  receiving  such  petition,  cause 
the  said  trademark  to  be  so  cancelled ;  and  the  same  shall, 
after  such  cancellation,  be  considered  as  if  it  had  never 
been  registered  under  the  name  of  the  said  person.  42 
v.,  c.  22,  s.  13. 

16.  Eveiy  trademark  registered  in  the  office  of  the 
Minister  of  Agriculture,  shall  be  assignable  in  law;  and 
on  the  assignment  being  produced,  and  the  fee  herein- 
before prescribed  being  paid,  the  Minister  shall  cause 
the  name  of  the  assignee,  with  the  date  of  the  assign- 
ment and  such  other  details  as  he  sees  fit,  to  be  entered 
on  the  margin  of  the  register  of  trademarks  on  the  folio 
where  such  trademark  is  registered.    42  V.,  c.  22,  s.  14. 

17.  Every  person,  other  than  the  person  who  has  reg- 
istered the  trademark,  who  marks  any  goods  or  any  ar- 
ticle of  any  description  whatsoever,  with  any  trademark 
registered  under  the  j^rovisions  of  this  act,  or  with  any 
IDart  of  such  trademark,  whether  by  applying  such  trade- 
mark or  any  part  thereof  to  the  article  itself,  or  to  any 
package  or  thing  containing  such  article,  or  by  using  any 
package  or  thing  so  marked  which  has  been  used  by  the 
proprietor  of  such  trademark,  or  who  knowingly  sells  or 
offers  for  sale  any  article  marked  with  such  trademark, 
or  with  any  part  thereof,  with  intent  to  deceive  and  to 
induce  any  person  to  believe  that  such  article  was  manu- 
factured, produced,  compounded,  packed  or  sold  by  the 
proprietor  of  such  trademark,  is  guilty  of  a  misde- 
meanor, and  liable,  for  each  offence,  to  a  fine  not  exceed- 
ing one  hundred  dollars  and  not  less  than  twenty  dol- 
lars,—which  fine  shall  be  paid  to  the  proprietor  of  such 
trademark,  together  with  the  costs  incurred  in  enforcing 
and  recovering  the  same: 

2,  Every  complaint  under  this  section  shall  be  made 
by  the  proprietor  of  such  trademark,  or  by  some  one 
acting  on  his  behalf  and  thereunto  duly  authorized.  42 
v.,  c.  22,  s.  16. 


CANADLVN   TR.VDEMABK   AND   DESIGN    ACT.  735 

18.  An  action  or  suit  may  be  maintained  by  any  pro- 
prietor of  a  trademark  against  any  person  who  uses  his 
registered  trademark,  or  any  fraudulent  imitation  there- 
of, or  who  sells  any  article  bearing  such  trademark  or 
any  such  imitation  thereof,  or  contained  in  any  package 
being  or  purporting  to  be  his,  contrary  to  the  provisions 
of  this  act.    42  V.,  c.  22,  s.  17. 

19.  No  person  shall  institute  any  proceeding  to  pre- 
vent the  infringement  of  any  trademark,  unless  such 
trademark  is  registered  in  pursuance  of  this  act.  42  V., 
c.  22,  s.  4,  part. 

20.  Any  person  may  be  allowed  to  inspect  the  register 
of  trademarks;  and  the  Minister  of  Agriculture  may 
cause  copies  or  representations  of  trademarks  to  be  de- 
livered, on  the  applicant  for  the  same  paying  the  fee  or 
fees  hereinbefore  prescribed.    42  V.,  c.  22,  s.  18. 

21.  Clerical  errors  which  occur  in  the  drawing  up  or 
copying  of  any  instrument,  under  the  preceding  sections 
of  this  act,  shall  not  be  construed  as  invalidating  the 
same,  and  when  discovered  they  may  be  corrected  under 
the  authority  of  the  Minister  of  Agriculture.  42  V.,  c. 
22,  s.  19. 

INDUSTRIAL   DESIGNS. 

22.  The  Minister  of  Agriculture  shall  cause  to  be 
kept  a  book  to  be  called  "Tlie  Register  of  Industrial 
Designs."  in  which  any  proprietor  of  a  design  may  have 
the  same  registered  on  depositing  with  the  Minister  a 
drawing  and  description  in  duplicate  of  such  design,  to- 
gether with  a  declaration  that  the  same  was  not  in  use, 
to  his  knowledge,  by  any  other  person  than  himself  at 
the  time  of  his  adoption  thereof;  and  the  Minister,  on 
receii^t  of  the  fee  hereinafter  jirovided,  shall  cause  such 
design  to  be  examined  to  ascertain  whether  it  resembles 
any  other  design  already  registered ;  and  if  he  finds  that 
such  design  is  not  identical  with,  or  does  not  so  closely 
resemble  any  other  design  already  registered  as  to  be 


736  APPENDIX  I. 

confounded  therewith,  he  shall  register  the  same,  and 
shall  return  to  the  proprietor  thereof  one  copy  of  the 
drawing  and  description,  with  a  certificate  signed  by  the 
Minister  or  the  deputy  of  the  Minister  of  Agriculture, 
to  the  effect  that  such  design  has  been  duly  registered  in 
accordance  with  the  provisions  of  this  act ;  and  such  cer- 
tificate shall  also  set  forth  the  day,  month  and  year  of 
the  entry  thereof  in  the  proper  register;  and  every  such 
certificate  purporting  to  be  so  signed  shall,  without  proof 
of  the  signature,  be  received  in  all  courts  in  Canada  as 
prima  facie  evidence  of  the  facts  therein  alleged.  42  V., 
c.  22,  s.  20. 

23.  The  Minister  of  Agriculture  may,  from  time  to 
time,  subject  to  the  approval  of  the  Governor  in  Council, 
make  rules  and  regulations  and  adopt  forms  for  the  pur- 
i^oses  of  this  act,  as  respects  industrial  designs,  and  such 
rules,  regulations  and  forms  circulated  in  print  for  the 
use  of  the  public,  shall  be  deemed  to  be  correct  for  the 
purposes  of  this  act ;  and  all  documents  executed  accord- 
ing to  the  same,  and  accepted  by  the  Minister,  shall  be 
deemed  to  be  valid  so  far  as  relates  to  official  proceed- 
ings under  this  act.    42  V.,  c.  22,  s.  21. 

24.  Every  design  in  order  to  be  protected,  shall  be 
registered  before  publication;  and  after  registration  the 
name  of  the  proprietor,  who  shall  be  a  resident  of  Can- 
ada, shall  appear  upon  the  article  to  which  his  design 
applies,  if  the  manufacture  is  a  woven  fabric,  by  being 
marked  upon  one  end  thereof,  together  with  the  letters 
"Ed.";  and  if  the  manufacture  is  any  other  substance, 
the  letters  ''Ed.,"  with  the  year  of  the  registration,  shall 
be  marked  at  the  edge  or  upon  any  convenient  part 
thereof : 

2.  The  mark  may  be  put  upon  the  manufacture  by 
making  it  on  the  material  itself,  or  by  attaching  thereto 
a  label  containing  the  proper  marks.    42  V.,  c.  22,  s.  23. 

25.  The  author  of  the  design  shall  be  considered  the 
proprietor  thereof,  unless  he  has  executed  the  design  for 


CANADIAN    TRADEMARK   AND    DESIGN    ACT.  737 

another  person,  for  a  good  or  valuable  consideration— 
in  which  case  such  other  person  shall  be  considered  the 
proprietor,  and  shall  alone  be  entitled  to  register  it ;  but 
his  right  to  the  property  shall  only  be  co-extensive  with 
the  right  which  he  has  acquired.    42  V.,  c.  22,  s.  24. 

26.  Before  any  action  is  taken  in  relation  to  an  appli- 
cation for  registering  an  industrial  design,  the  following 
fees  shall  be  paid  to  the  Minister  of  Agriculture,  that 
is  to  say:  — 

On  every  application  to  register  a  design,  including  certificate $5  00 

On  every  application  for  an  extension  of  time,  including  certifi- 
cate, for  each  year  of  such  extension 2  00 

For  a  copy  of  each  certificate  of  registration,  separate  from  the 

return  of  the  duplicate 1  00 

For  the  recording  of  an  assignment 2  00 

For  office  copies  of  documents,  not  above  mentioned,  for  every 

hundred  words  or  for  a  fraction  thereof 0  50 

For  each  copy  of  any  drawn  copy  of  an  industrial  design,  the 
reasonable  expense  of  preparing  the  same: 

And  such  fees  shall  be  paid  over  by  the  Minister  of 
Agriculture  to  the  Minister  of  Finance  and  Receiver 
General : 

2.  If  the  Minister  of  Agriculture  refuses  to  register 
the  industrial  design  in  respect  of  which  application  is 
made,  the  fee  shall  be  returned  to  the  applicant  or  his 
agent,  less  the  sum  of  two  dollars,— which  shall  be  re- 
tained as  compensation  for  office  expenses.  42  V.,  c.  22, 
s.  36. 

27.  The  Minister  of  Agriculture  may  refuse  to  regis- 
ter such  designs  as  do  not  appear  to  him  to  be  within  the 
provisions  of  this  act,  or  any  design  which  is  contrary  to 
public  morality  or  order— subject  to  appeal  to  the  Gov- 
ernor in  Council.    42  V.,  c.  22,  s.  34. 

28.  On  the  copy  returned  to  the  person  registering, 
a  certificate  shall  be  given,  signed  by  the  Minister  of 
Agriculture  or  the  deputy  of  the  Minister  of  Agriculture, 
showing  that  the  design  has  been  registered,  the  date  of 
registration,  the  name  of  the  registered  proprietor,  his 

47 


738  APPENDIX  I. 

address,  the  number  of  such  design,  and  the  number  or 
letter  employed  to  denote  or  correspond  to  the  registra- 
tion,—which  said  certificate,  in  the  absence  of  proof  to 
the  contrary,  shall  be  sufficient  proof  of  the  design,  of 
the  name  of  the  proprietor,  of  the  registration,  of  the 
commencement  and  term  of  registry,  of  the  i)erson 
named  as  proprietor  being  proprietor,  of  the  originality 
of  the  design,  and  of  compliance  with  the  provisions  of 
this  act:  and  generally  the  writing  purporting  to  be  so 
signed  shall  be  received  as  prima  facie  evidence  of  the 
facts  therein  stated,  without  proof  of  the  signature.  42 
v.,  c.  22,  s.  32. 

29.  The  exclusive  right  acquired  for  an  industrial 
design  by  the  registration  of  the  same  as  aforesaid  shall 
be  valid  for  the  term  of  five  years,  but  may  be  renewed 
at  or  before  the  expiration  of  the  said  term  of  five  years, 
for  a  further  period  of  five  years  or  less,  on  payment  of 
the  fee  hereinbefore  prescribed,  so  as  that  the  whole 
duration  of  the  exclusive  right  shall  not  exceed  ten  years 
in  all.    42  V.,  c.  22,  s.  22. 

30.  Every  design  shall  be  assignable  in  law,  either  as 
to  the  whole  interest  or  any  undivided  part  thereof,  by 
an  instrument  in  writing,  which  shall  be  recorded  in  the 
office  of  the  Minister  of  Agriculture,  on  payment  of  the 
fees  hereinbefore  provided;  and  every  proprietor  of  a 
design  may  grant  and  convey  an  exclusive  right,  under 
any  copyright,  to  make,  use  and  vend,  and  to  grant  to 
others  the  right  to  make,  use  and  vend  such  design, 
within  and  throughout  Canada,  or  any  part  thereof,  for 
the  unexpired  term  of  its  duration,  or  any  part  thereof,— 
which  exclusive  grant  and  conveyance  shall  be  called  a 
license,  and  shall  be  recorded  in  the  same  manner  and 
within  the  same  delay  as  assignments.    42  V.,  c.  22,  s.  25. 

31.  During  the  existence  of  the  exclusive  right 
(whether  it  is  of  the  entire  or  partial  use  of  such  de- 
sign), no  person  shall,  without  the  license  in  writing  of 
the  registered  proprietor,  or  of  his  assignee,  as  the  case 


CAN^VDIAN    TR.\J)EMARK    AND    DESIGN    ACT.  739 

may  be,  apply  such  design,  or  a  fraudulent  imitation 
thereof,  to  the  ornamenting  of  any  article  of  manufac- 
ture, or  other  article  to  which  an  industrial  design  may 
be  applied  or  attached,  for  the  i)urposes  of  sale,  or  shall 
publish,  sell  or  expose  for  sale  or  use  any  such  article 
as.  aforesaid,  to  which  such  design  or  fraudulent  imita- 
tion thereof  has  been  applied;  and  every  one  who  vio- 
lates the  provisions  of  this  section  shall  forfeit  a  sum 
not  exceeding  one  hundred  and  twenty  dollars,  and  not 
less  than  twenty  dollars,  to  the  proprietor  of  the  design, 
which  shall  be  recoverable,  with  costs,  on  summary  con- 
viction, by  the  registered  proprietor  or  his  assignee.  42 
v.,  c.  22,  s.  26. 

32.  Every  person  who  places  the  word  "registered," 
or  the  letters  **Rd.,"  upon  any  article  for  which  no  de- 
sign has  been  registered,  or  upon  any  article  for  the 
design  of  which  the  copyright  has  expired,  or  who  adver- 
tises the  same  for  sale  as  a  registered  article,  or  unlaw- 
fully sells,  publishes  or  exposes  for  sale  such  article, 
knowing'  the  same  to  have  been  fraudulently  marked,  or 
that  the  copyright  therefor  has  expired,  shall,  for  each 
offence,  on  summary  conviction,  be  liable  to  a  penalty 
not  exceeding  thirty  dollars  and  not  less  than  four  dol- 
lars, which  shall  be  recoverable,  with  costs,  by  any  per- 
son who  sues  for  the  same ;  and  a  moiety  of  such  penalty 
shall  belong  to  the  prosecutor,  and  the  other  moiety  to 
Her  Majesty,  for  the  public  uses  of  Canada.  42  V.,  c. 
22,  s.  27. 

33.  The  Exchequer  Court  of  Canada  shall,  in  respect 
of  the  register  of  industrial  designs,  have  jurisdiction  in 
a  like  proceeding  and  manner  as  hereinbefore  provided  in 
respect  of  the  register  of  trademarks,  to  make  orders 
for  the  making,  expunging  or  varying  any  entry  in  such 
register  of  industrial  designs,  or  for  adding  to  or  alter- 
ing any  industrial  design.    54-55  V.,  c.  35. 

34.  The  Minister  of  Agriculture  shall,  after  due  ser- 
vice of  such  order  and  pajTnent  of  the  fee  hereinbefore 


740  APPENDIX  I. 

provided,  cause  such  alteration  to  be  made  in  the  regis- 
ter respecting  industrial  designs  as  is  directed  by  the 
order  made  under  the  next  preceding  section.  42  V.,  c. 
22,  s.  30. 

35.  A  suit  may  be  maintained  by  the  proprietor  of 
any  design  for  the  damages  he  has  sustained  by  the  ap- 
plication or  imitation  of  the  design,  for  the  purpose  of 
sale,  against  any  person  so  offending— if  the  offender 
was  aware  that  the  proprietor  of  the  design  had  not 
given  his  consent  to  such  application.    42  V.,  c.  22,  s.  28. 

36.  All  proceedings  under  the  preceding  sections  of 
this  act,  respecting  industrial  designs,  shall  be  brought 
within  twelve  months  from  the  commission  of  the  offence, 
and  not  afterwards;  and  none  of  the  provisions  of  the 
said  sections  shall  apply  to  protect  any  design  which 
does  not  belong  to  a  person  resident  within  Canada,  and 
which  is  not  applied  to  a  subject  matter  manufactured 
in  Canada.    42  V.,  c.  22,  s.  31. 

37.  Any  person  may  be  allowed  to  inspect  the  regis- 
ter of  industrial  designs;  and  the  Minister  of  Agricul- 
ture may  cause  copies  or  representations  of  industrial 
designs  to  be  delivered,  on  the  applicant  for  the  same 
paying  the  fee  which  is  deemed  sufficient  for  the  purpose 
of  having  the  same  copied  or  represented.  42  V.,  c.  22, 
s.  33. 

38.  Clerical  errors  which  occur  in  the  drawing  up  or 
copying  of  any  instrument  respecting  an  industrial  de- 
sign, shall  not  be  construed  as  invalidating  the  same,  but, 
when  discovered,  they  may  be  corrected  under  the  au- 
thority of  the  Minister  of  Agriculture.    42  Y.,  c.  22,  s.  35. 


CANADIAN    TRiU)EMARK    AND   DESIGN    ACT,  741 


RULES  AND  FORMS  OF  THE  DEPARTMENT  OF 

AGRICULTURE   RESPECTING   "THE 

TRADEMARK  AND  DESIGN  ACT." 

APPROVED   BY    THE    GOVERNOR    IN    COUNCIL,   ON    THE   9tH   OF 

MAY,   1887. 

GENERAL  RULES. 

L 

Tliere  is  no  necessity  for  any  personal  appearance  at 
the  Department  of  Agriculture,  unless  specially  called 
for  by  order  of  the  Minister  or  the  Deputy,  every  trans- 
action being  carried  on  by  writing. 


n. 

In  every  case  the  applicant  or  depositor  of  any  paper 
is  responsible  for  the  merits  of  his  allegations  and  of 
the  validity  of  the  instruments  furnished  by  him  or  his 
agents. 

m. 

The  correspondence  is  carried  on  with  the  applicant, 
or  with  the  agent  who  has  remitted  or  transmitted  the 
papers  to  the  office,  but  with  one  person  only. 

TV. 

All  papers  are  to  be  clearly  and  neatly  written  on  fools- 
cap paper  and  every  word  of  them  is  to  be  distinctly 
legible,  in  order  that  no  difficulty  should  be  met  with  in 
the  taking  cognizance  of  and  in  the  registering  and 
copying  them. 


742  APPENDIX  I. 

V. 

All  communications  to  be  addressed  in  the  following 
words:— To  the  Minister  of  Agriculture,  (Trademark 
and  Copyright  Branch),  Ottawa. 

VI. 

As  regards  proceedings  not  specially  provided  for  in 
the  following  forms,  any  form  being  conformable  to  the 
letter  and  spirit  of  the  law  will  be  accepted,  and  if  not 
so  conformable  will  be  returned  for  correction. 

VII. 

A  copy  of  the  Act  and  the  Eules  with  a  particular  sec- 
tion marked,  sent  to  any  person  making  an  inquiry,  is 
intended  as  a  respectful  answer  by  the  office. 


TRADEMARKS. 

vin. 

An  application  for  the  registration  of  a  General  Trade- 
mark shall  be  made  in  duplicate  after  the  following 
form  :— 

To  the  Minister  of  Agriculture, 

{Trademark  and  Copyright  Branch), 
Ottawa. 

I,  {name  of  person)  of  the  {City,  Town  or  other  locality,  as  the 
case  may  he),  in  {name  of  County,  Province  or  State,  as  the  case  may 
he),  hereby  furnish  a  duplicate  copy  of  a  General  Trademark,  in  ac- 
accordance  with  Sections  4  and  9  of  "The  Trademark  and  Design  Act," 
which  I  verily  believe  is  mine,  on  account  of  having  been  the  first  to 
make  use  of  the  same  {or  on  account  of  having  acquired  it  from, 
naming  the  person,  whom  I  verily  believe  to  he  the  original  proprietor 
thereof). 

The  said  General  Trademark  consists    {here    must    he    inserted    a 


CANADIAN    TRADEMARK   AUD   DESIGN    ACT.  743 

description  of  the  Trademark,  recital  of  the  Motto  or  Mottoes,  dc,  dc, 
in  order  to  explain  the  pattern  furnished),  and  I  hereby  request  the 
said  General  Trademark  to  be  registered  in  accordance  with  the  law. 

I  forward  herewith  the  fee  of  |30,  in  accordance  with  Section  10  of 
the  said  Act. 

In  testimony  thereof,  I  have  signed  in  the  presence  of  the  two  un- 
dersigned witnesses,  at  the  place  and  date  hereunder  mentioned. 

(Place  and  date.)  (Signature  of  Proprietor.) 


Signature  of  the  two  witnesses 


) 


IX. 

An  application  for  the  registration  of  a  Specific  Trade- 
mark shall  be  made  in  duplicate,  after  the  following 
form:— 

To  the  Minister  of  Agriculture, 

{Trademark  and  Copyright  Branch), 
Ottawa. 

I,  {name  of  person)  of  the  {City,  Town  or  other  locality,  as  the  case 
may  be),  in  {name  of  County,  Province  or  State,  as  the  case  may  be), 
hereby  furnish  a  duplicate  copy  of  a  Specific  Trademark,  to  be  applied 
to  the  sale  of  {description  of  the  class  of  Merchandise),  in  accordance 
with  Sections  4  and  9  of  "The  Trademark  and  Design  Act,"  which  I 
verily  believe  is  mine,  on  account  of  having  been  the  first  to  make  use 
of  the  same  {or  on  account  of  having  acquired  it  from,  naming  the 
person,  whom  I  verily  believe  to  be  the  original  proprietor  thereof). 

The  said  Specific  Trademark  consists  (here  must  be  inserted  a 
description  of  the  Trademark,  recital  of  the  Motto  or  Mottoes,  dc,  dc, 
in  order  to  explain  the  pattern  furnished),  and  I  hereby  request  the 
said  Specific  Trademark  to  be  registered  in  accordance  with  the  law. 

I  forward  herewith  the  fee  of  $25,  in  accordance  with  Section  10  of 
the  said  Act, 

In  testimony  thereof,  I  have  signed,  in  the  presence  of  the  two 
undersigned  witnesses,  at  the  place  and  date  hereunder  mentioned. 

{Place  and  date.)  (Signature  of  Proprietor.) 

Signature  of  the  two  witnesses.     [• 


744  APriiNDlX  1. 

INDUSTRIAL  DESIGNS. 

X. 

An  application  for  the  registration  of  an  Industrial  De- 
sign shall  be  made  in  duplicate,  after  the  following 
form:  — 

To  the  Minister  of  Agriculture, 

(Trademark  and  Copyright  Branch), 
Ottawa. 

I,  {name  of  the  person)  being  a  resident  of  Canada,  and  now  resid- 
ing in  the  (City,  Town  or  other  locality,  as  the  case  may  he),  in  the 
(name  of  the  Province,  as  the  case  may  be),  hereby  declare  that  I 
am  the  proprietor  of  the  Industrial  Design  of  which  duplicate  copies 
are  herewith  forwarded,  and  which  consists  (here  insert  a  description 
of  the  design,  and  an  explanation  of  its  use),  and  I  hereby  request 
that  the  said  Industrial  Design  be  registered  in  accordance  with  the 
law. 

I  forward  herewith  the  fee  of  $5,  in  accordance  with  Section  26  of 
"The  Trademark  and  Design  Act." 

In  testimony  thereof,  I  have  signed,  in  the  presence  of  the  two  un- 
dersigned witnesses,  at  the  place  and  date  hereunder  mentioned. 

(Place  and  date.)  (Signature  of  the  Proprietor.) 


Signature  of  the  two  witnesses 


•1 


CANADIAN    TEADEMAEK   AND   DESIGN    ACT.  745 


NOTICE. 

The  correspondence  with  the  Department  is  carried 
through  the  Canadian  Mail,  free  of  postage. 

The  foi-warding  of  any  paper  should  always  be  accom- 
panied by  a  letter,  and  a  separate  letter  should  be  writ- 
ten in  relation  to  each  distinct  subject. 

It  is  particularly  recommended  that  reference  should 
be  made  to  the  law,  before  writing  on  any  subject  to  the 
Department  in  order  to  avoid  unnecessaiy  explanations 
and  useless  loss  of  time  and  labor:  and  it  is  also  recom- 
mended, in  every  case,  to  have  the  papers  and  drawings 
prepared  by  a  competent  person,  for  the  interest  both  of 
the  applicant  and  of  the  public  service. 

A  sufficient  margin  should  be  left  on  every  paper,  and 
specially  on  specifications  and  assignments,  for  the  in- 
sertion of  references  or  certificates,  and  for  the  affixing 
of  the  seal  thereto. 

It  must  be  remembered  that  the  better  the  papers  are 
executed,  the  sooner  the  work  is  despatched  at  the  office, 
and  the  surer  the  regularity  of  the  proceedings  is  guar- 
anteed. 


APPENDIX   J. 

FOEMS  OF  BILLS  AND:  ANSWERS. 

DECLARATION. 

(Warner  v.  Roehr,  Fed.  Case  No.  17189A.) 

In  the  Circuit  Court  of  the  United  States  in  and  for  the 
Northern  District  of  Illinois. 


HULBEBT   H.    Wabner,    trading   and 
doing  business  under  the  name 
and  style  of  H.  H.  Waenee  &  Co., 
vs. 
Fbank  Roehb. 


No.   18765. 

Case.     Damages,  $25,000. 


H.  H.  W.,  a  citizen  of  the  state  of  New  York,  trading  and  doing  busi- 
ness under  the  firm  name  and  style  of  H.  H.  W.  &  Co.,  at  the  city  of 
Rochester,  in  the  county  of  Monroe,  in  said  state  of  New  York,  plaintiff, 
by  W.  H.  B.  and  J.  F.  L.,  his  attorneys,  complains  of  F.  R.,  a  citizen  of 
the  state  of  Illinois,  and  residing  and  doing  business  at  the  city  of  Chi- 
cago, in  the  county  of  Cook,  in  the  said  state  of  Illinois  and  in  the  dis- 
trict aforesaid,  defendant,  of  a  plea  of  trespass  on  the  case. 

For  that  whereas,  the  said  plaintiff  shows  that  for  several  years  last 
past  he  has  been  engaged,  at  the  said  city  of  Rochester,  in  the  manu- 
facture and  sale  of  a  certain  medicinal  preparation  known  as  "War- 
ner's Safe  Kidney  and  Liver  Cure,"  which  preparation  has  become 
widely  known  through  the  domain  of  commerce,  and  especially  in  all 
parts  of  the  United  States,  as  a  valuable  medicine  for  various  kinds  of 
diseases  of  human  beings. 

That  in  the  introduction  of  said  medicinal  preparation,  and  to  bring 
it  to  the  attention  of  the  public,  he  expended  in  advertising  the  sum  of 
about  five  hundred  thousand  dollars  ($500,000),  and  in  various  ways 
has  expended  enormous  sums  of  money  to  that  end;  that  for  a  better 
protection  of  his  right  as  proprietor,  manufacturer  and  vendor  of  said 
medicine  he  has  caused  peculiar  bottles  to  be  manufactured  to  contain 
the  same,  which  bottles  have  blown  into  the  glass  thereof  the  name  of 
said  medicine,  and  which  name  contains  a  word-symbol,  to  wit,  the 
word  "Safe,"  as  the  essential  element  of  a  trade  mark,  and  also  the 
symbolic  "trademark"  consisting  of  the  representation  of  a  fire-proof 
safe;  which  said  "trademark"  is  his  sole  property,  no  other  person, 
firm  or  corporation  having  a  right  to  the  use  of  the  same,  either  in  the 

746 


FORMS    OP    BILLS    AND    ANSWERS.  747 

identical  form  or  in  any  such  near  resemblance  thereto  as  might  be  cal- 
culated to  deceive,  nor  to  affix  to  medicine  or  merchandise  of  substan- 
tially the  same  descriptive  properties  as  his  medicine  aforesaid. 

That  being  the  owner  of  said  "trademark,"  by  virtue  of  priority  of 
adoption,  in  connection  with  said  medicine,  this  plaintiff  caused  the 
same  to  be  recorded  in  the  Patent  Office  of  the  United  States,  with  a 
statement  specifying  his  name,  domicile,  location  and  citizenship;  the 
class  of  merchandise  and  the  particular  description  of  goods  com- 
prised in  the  class  to  which  the  particular  "trademark"  had  been 
appropriated  by  him;  also  a  description  of  the  "trademark"  itself  with 
fac-similes  thereof,  and  a  statement  of  the  mode  in  which  the  same  is 
applied  and  affixed  to  goods  and  the  length  of  time  during  which  the 
said  "trademark"  has  been  used  by  him  for  the  purpose  aforesaid. 

Plaintiff  further  shows  that  he  paid  into  the  trea.sury  of  the  United 
States  the  sum  of  twenty-five  dollars  ($25.00)  and  complied  with  the 
regulations  prescribed  by  the  commissioner  of  patents  as  provided  in 
the  act  of  congress  entitled  "An  act  to  authorize  the  registration  of 
trademarks  and  protect  the  same,"  approved  March  3,  1881,  as  will  more 
fully  appear  by  reference  to  the  certificate  of  registry  of  said  trade- 
mark, numbered  9597,  dated  the  8th  day  of  August,  1882,  signed  by  E. 
M.  Marble,  commissioner  of  patents,  and  attested  by  the  seal  of  the 
Department  of  the  Interior,  which  certificate  is  hereto  attached  and 
made  part  of  this  declaration. 

Plaintiff  further  shows  that  said  "trademark"  is  applied  and  affixed 
to  goods  by  blowing  it  in  the  glass,  as  aforementioned,  and  by  printing 
it  on  paper,  which  in  the  form  of  labels  is  afterwards  pasted  on  the 
bottles  containing  the  medicine,  and  it  is  also  printed  on  wrappers,  or 
otherwise  affixed  to  packages  to  be  used  in  any  manner  calculated  to 
notify  purchasers  of  the  contents  and  to  guard  against  fraud. 

This  plaintiff  shows  that  he  is  the  sole  owner  by  right  of  priority  of 
adoption  and  use  of  a  certain  other  trademark  consisting  of  a  fac- 
simile of  his  firm  signature,  "H.  H.  Warner  &  Co.,"  which  said  latter- 
mentioned  "trademark"  is  printed  on  a  separate  label,  and  pasted  over 
the  cork  of  each  bottle,  after  the  same  has  been  filled  with  said  medi- 
cine. 

Plaintiff  further  shows  that  he  is  the  sole  owner  by  right  of  priority 
of  adoption  and  use  of  a  certain  other  trademark  entitled  "Book  of 
$2,000.00  Prize  Enigmas,"  containing  the  representation  of  a  man,  rep- 
resenting a  botanist  standing  beside  a  palm  tree  examining  a  plant 
through  a  magnifying  glass,  and  other  matters  not  necessary  to  be  here 
mentioned,  all  the  same  being  printed  on  the  cover  of  a  pamphlet. 

Plaintiff  further  shows  that  he  is  the  sole  owner  by  right  of  priority 
of  adoption  and  use  of  a  certain  other  trademark  representing  the  front 
of  a  fire-proof  safe,  in  the  central  part  of  which  is  shown  a  negro,  on 
one  knee  gathering  herbs,  above  whom  are  the  words,  "Warner's  Safe," 
and  below  him  are  the  words,  "Kidney  and  Liver  Cure." 

Plaintiff  further  shows  that  for  the  purpose  of  guarding  against 
fraudulent  imitations   of  his   said   medicine,   and   to   authenticate  the 


748  APPENDIX  J. 

genuineness  of  goods  of  his  manufacture,  he  caused,  and  still  causes, 
each  bottle  of  the  same  to  have  wrapped  about  it  a  pamphlet  bearing 
his  said  trademarks  with  loose  circulars  between  the  leaves  of  said 
pamphlet,  and  wrapped  about  the  same  another  printed  circular,  print- 
ed in  several  different  languages;  which  said  pamphlet  contained  a 
great  many  testimonials  of  the  intrinsic  value  of  said  medicine  as  a 
remedy  for  various  diseases  and  disorders,  and  also  fac-similes  of  the 
signatures  of  the  signers  of  said  testimonials;  and  said  pamphlet  con- 
taining, among  other  matters,  a  great  many  enigmas  for  the  solution  of 
which  large  prizes  were  offered  by  the  plaintiff.  That  as  a  further 
precaution  against  fraud,  and  as  a  means  of  identification,  the  said 
medicine  is  packed  in  wooden  boxes,  which  boxes  contain  each  one 
dozen  bottles  of  plaintiff's  medicine  labeled  and  wrapped  as  aforesaid, 
and  bearing  upon  one  side  of  the  boxes  the  following  printed  words: 
"One  Dozen  Warner's  Safe  Kidney  and  Liver  Cure,  Manufactured  by  H. 
H.  Warner  &  Co.,  Rochester,  N.^Y." 

And  the  said  plaintiff  further  shows  that  he  has  ever  since  the  dates 
of  the  adoption  of  the  said  trademarks  been  and  now  is  solely  entitled 
to  all  the  rights,  interests  and  privileges  thereby  so  secured  unto  him; 
and  that  the  said  medicine  with  the  accompanying  trademark  has  been 
extensively  introduced  to  public  use,  and  that  large  quantities  thereof, 
to  wit,  several  millions  of  bottles,  have  been  purchased  and  consumed 
by  the  public  for  which  he  has  received  several  millions  of  dollars,  and 
that  he  would  but  for  the  wrongful  acts  of  the  said  defendant,  Frank 
Roehr,  have  made  further  large  gains,  profits  and  advantages  from  the 
manufacture  and  sale  of  said  medicine.     And  plaintiff  further  shows 

that  heretofore,  to  wit,  on  or  about  the day  of  October,  A.  D.  1883, 

at  the  city  of  Chicago,  in  the  district  aforesaid,  the  said  defendant 
Frank  Roehr,  well  knowing  the  premises,  and  the  rights  and  privileges 
theretofore  secured  unto  him  the  said  plaintiff,  and  in  order  to  deprive 
him  of  his  profits,  benefits  and  advantages  which  might  and  otherwise 
should  and  would  have  accrued  to  him  at  the  said  district,  and  else- 
where, unlawfully,  unjustly,  and  wrongfully  simulated  the  various 
aforesaid  trademarks,  circulars,  labels,  wrappers,  packages  and  boxes, 
in  which  said  genuine  medicine  of  this  plaintiff  has  been  put  up  for 
the  purposes  of  commerce,  and  for  the  purpose  of  carrying  into  execu- 
tion his  nefarious  enterprise  in  that  respect,  the  said  defendant,  F.  R., 
employed  large  capital,  and  a  large  number  of  assistants,  including 
printers,  electrotypers,  photographers,  and  other  persons  skilled  in  the 
arts  necessary  for  the  accomplishment  of  his  unlawful  purpose  afore- 
said, and  did  make  exact  representations  of  the  genuine  trademarks, 
labels,  etc.,  hereinbefore  described,  so  closely  resembling  the  genuine 
as  to  be  calculated  to  deceive  purchasers,  and  which  in  many  instances 
did  actually  deceive  purchasers,  who  supposed  that  they  were  buying 
the  genuine  medicine  manufactured  as  aforesaid  by  this  plaintiff,  when 
in  fact  the  simulated  packages  contained  only  a  base  fluid,  colored  to 
resemble  the  genuine  medicine  of  the  plaintiff. 

Plaintiff  further   shows   that  said   defendant,   F.   R.,   manufactured 


FORMS    OP    BILLS    AND    ANSWERS.  749 

large  quantities  of  packages  made  in  exact  representation  of  this  plaint- 
iff's genuine  packages  and  containing  inside  thereof  the  simulated 
labels,  wrappers,  etc.,  hereinbefore  described,  and  bottles  filled  with  a 
fluid  purporting  to  be  this  plaintiff's  genuine  medicine,  but  which  in 
fact  was  not  so,  but  only  a  base  imitation  thereof,  and  offered  for  sale 
at  the  district  aforesaid  and  elsewhere,  and  did  sell  large  quantities  of 
the  same,  all  of  which  said  wrongful  acts  of  said  defendant,  F.  R.,  were 
done  without  the  knowledge,  consent  or  acquiescence  of  the  said  plaint- 
iff, and  with  the  intent  to  injure  and  defraud  him.  to  the  damage  of 
this  plaintiff  of  twenty-five  thousand  dollars  ($25,000),  and  therefore  he 
brings  this  suit. 

W.  H.  B., 
J.  F.  L.. 
Plaintiff's  Attorneys. 
Indorsed:  Filed  Dec.  6,  1883,  Wm.  H.  Bradley,  Clerk. 


BILL  OF  COMPLAINT. 

(Taylor  v.  Carpenter,  3  Story,  458.) 

To  the  Judges  of  the  Circuit  Court  of  the  United  States  for  the  Dis- 
trict of  Massachusetts: 

J.  T.  and  W.  T.,  of  the  borough  of  Leicester,  in  that  part  of  the 
United  Kingdom  of  Great  Britain  and  Ireland  called  England,  man- 
ufacturers, subjects  of  Victoria  the  First,  queen  of  said  kingdom,  and 
aliens  to  each  and  all  of  the  United  States  of  America,  and  the  territo- 
ries and  districts  thereof,  bring  this  bill  of  complaint  against  D.  C.  of 
F.,  in  the  said  district  of  Massachusetts,  manufacturer,  a  citizen  of  tho 
said  state  of  Massachusetts.  And  thereupon  the  said  J.  T.  and  W.  T., 
complaining,  say  that  for  many  years  past  they  have  been  very  exten- 
sively engaged  in  manufacturing  cotton  thread  at  Leicester  aforesaid, 
and  vending  the  same  in  large  quantities,  not  only  in  England,  but 
throughout  the  United  States,  and  in  particular  in  the  city  of  B.,  in  said 
district.  That  their  said  thread  is,  and  for  many  years  has  been,  put 
up  for  sale  on  spools,  and  labeled  on  the  top  of  the  spools  "Taylor's 
Persian  Thread"  in  a  circle,  in  the  center  of  which  is  the  number  of  the 
thread,  and  on  the  bottom  of  some  of  the  spools  "J.  &  W.  Taylor. 
Leicester,"  and  on  the  bottom  of  others,  "J.  &  "W.  Taylor,"  with  the 
number  of  yards  of  thread  on  each  spool,  each  spool  usually  containing 
two  hundred  yards  or  three  hundred  yards  of  thread,  and  the  spools 
containing  two  hundred  yards  being  black  and  labeled  "200  yds."  on 
the  bottom  of  the  spool,  and  those  containing  three  hundred  yards 
being  red,  and  labeled  "300  yds."  on  the  bottom  of  the  spools.  And 
on  the  center  of  some  of  the  said  labels  on  the  bottom  of  each  spool  Is 
stamped  the  symbol  or  print  of  the  head  and  forepart  of  a  lion  ramp- 
ant. And  on  the  center  of  other  of  said  labels  is  stamped  a  coat-of- 
arms,  the  shield  whereon  contains  a  lion  rampant,  and  over  the  same 


750  APPENDIX  J. 

three  balls  with  the  motto  "In  Deo  Coufido."    And  your  orators  further 
say  that  their  spools  so  marked,  stamped,  colored,  or  labeled  as  afore- 
said, are  put  up  for  sale  in  paper  envelopes,  each  containing  one  dozen 
of  spools;    which  said  envelopes  are  prepared  and  stamped  by  your 
orators  for  said  purpose,  and  some  of  said  envelopes  bear  in  raised 
letters  stamped  on  them  the  inscription,  "The  Persian  Thread,  made 
by  J.  &  W.  Taylor,  labeled  on  the  top  of  each  spool,  Taylor's  Persian 
Thread,  and  on  the  bottom  J.  &  W.  Taylor,  Leicester.    The  above  is  for 
the  protection   of  buyers  against  certain  piratical  articles  of  inferior 
quality,  fraudulently  labeled  with  the  name  of  Taylor."     And  on  other 
of  the  said  envelopes  is  stamped  a  coat-of-arms  representing  a  shield, 
the  upper  division  of  which  is  gilt,  and  contains  three  red  balls,  and 
the   lower   division   thereof  is  red  and   contains  the   effigy   of  a  lion 
rampant,   with   the   motto  under  the   same,   "In   Deo   Confido."     Your 
orators  further  show  unto  your  honors  that  their  said  thread  has  been 
and  is  manufactured  of  various  sizes  and  numbers,  to  meet  the  wants 
of  the  trade;   and  by  means  of  the  care,  skill  and  fidelity  with  which 
your  orators  have  conducted  the  manufacture  thereof  for  a  series  of 
years,  their  said  thread  has  acquired  a  great  reputation  in  the  trade 
throughout  the  United  States,   and   large   quantities   of  the  same  are 
constantly  required  from  your  orators  to  supply  the  regular  demand 
for  the  consumption  of  the  country.    And  your  orators  have  established 
agencies  for  the  sale  thereof  to  the  wholesale  dealers  and  jobbers  in  the 
cities  of  B.,  N.  Y.,  P.  and  N.  O.,  and  in  addition  thereto  your  orators 
employ  B.  W.,  now  residing  in  said  city  of  N.  Y.,   as  their  general 
agent  for  the  United  States,  in  relation  to  the  sale  of  their  said  spool 
sewing  cotton  thread;  and  a  mercantile  firm  of  H.  &  C.  are  the  agents 
of  your  orators  for  the  sale  of  the  same  in  the  city  of  B.;   and  your 
orators  further  show  unto  your  honors  that  their  said  thread  is  known 
and   distinguished  by  the  trade  and  the  public  as  "Taylor's   Persian 
Thread,"  and  that  your  orators  were  the  original  manufacturers  there- 
of, and  the  first  who  introduced  the  same  to  the  public.    That  your  ora- 
tors' said  general  agent,  on  or  about  the  first  day  of  March  last  past, 
hearing  that  complaints  were  made  of  the  quality  of  "Taylor's  Persian 
Thread,"   proceeded   to   investigate   the   cause   of   said   complaint  and 
thereupon  ascertained  that  a   spurious  article  of  spool  sewing  cotton 
thread  was  offered  for  sale  by  sundry  jobbers  in  the  said  city  of  B., 
as  and  for  your  orators'  "Persian  Thread,"  and  that  such  complaints 
had  arisen  from  the  fraudulent  imposition  of  such  spurious  article  on 
the  public.     Your  orators  further  show  unto  your  honors  that  their 
said  agent  further  ascertained  upon  inquiry,  and  your  orators  charge 
the  facts  to  be,  that  the  said  spurious  thread  so  sold  and  offered  for 
sale  in  the  said  city  of  B.,  or  some  of  it,  was  furnished  to  the  said  job- 
bers by  D.  C,  either  by  him  personally  or  by  one  F.  D.  E.,  of  B..  his 
agent  in  that  behalf,  and  your  orators  are  informed  and  believe  that 
the  said  D.  C.  has  sold  the  said  thread,  put  up.  marked  and  designated 
as  aforesaid,  in  the  said  city  of  B.;   that  the  said  D.  C,  disregarding 
the  rights  of  your  orators,  and  fraudulently  designing  to  procure  the 


FORMS    OF    BILLS    AND    ANSWERS.  751 

custom  and  trade  of  persons  who  are  in  the  habit  of  vending  or  using 
your  orators'  said  "Persian  Thread,"  and  to  induce  them  and  the 
public  to  believe  that  his  said  thread  was  in  fact  manufactured  by 
your  orators,  had  engaged  extensively  in  the  manufacture  of  sewing 
cotton  thread,  and  caused  the  same  to  be  put  up  for  sale  in  envelopes 
and  on  spools  similar  to  those  used  by  your  orators,  and  so  colored  and 
stamped  and  labeled  as  to  resemble  exactly  the  said  spools  and  envel- 
opes used  by  your  orators.  And  the  said  spool  sewing  cotton  thread, 
prepared  by  the  said  U.  C.  and  sold  by  him,  and  which  he  is  engaged 
in  selling  as  aforesaid,  is  an  exact  Imitation  of  the  same  article  which 
your  orators  had  been  manufacturing  as  aforesaid,  and  selling  in  the 
United  States  for  many  years  before  the  said  D.  C.  commenced  his  said 
fraudulent  imitation  thereof.  And  the  said  spurious  article,  although 
inferior  in  quality  to  the  genuine  Persian  Thread  manufactured  by 
your  orators,  can  only  be  distinguished  therefrom,  so  exact  is  the  said 
D.  C.'s  imitation  as  aforesaid,  by  a  careful  examination  of  its  quality, 
and  by  its  falling  short  in  the  number  of  yards  contained  on  each  spool 
from  the  number  marked  thereon  as  the  contents  thereof.  And  that 
the  general  appearance  of  the  spurious  article  is  the  same  as  that  of 
your  orators'  genuine  thread,  and  well  calculated  to  deceive  those 
dealing  in  the  purchase  and  sale  thereof.  Your  orators  further  show 
unto  your  honors  that  their  said  general  agent  has  obtained  specimens 
of  the  said  spurious  Persian  Thread  so  sold  by  the  said  D.  C.  That  in 
some  of  the  specimens  thus  obtained,  the  thread  is  put  upon  black 
spools,  and  in  other  of  said  specimens  the  thread  is  put  upon  red 
spools,  and  said  black  and  red  spools  are  of  the  same  size  and  appear- 
ance with  those  used  by  your  orators,  on  the  top  of  which  spurious 
spools  there  is  pasted  a  round  paper  label,  partly  gilt,  on  which  is 
printed  in  a  circle  the  words  "Taylor's  Persian  Thread,"  and  in  the 
center  of  the  circle  the  number  of  the  thread;  and  on  the  other  end  on 
the  bottom  of  such  spurious  spools  there  is  pasted  a  round  paper  label 
on  some  of  which  is  printed  in  a  circle  the  words,  "J.  &  W.  Taylor, 
Leicester,"  and  on  others.  "J.  &  W.  Taylor,"  with  the  number  of  yards 
of  thread  on  the  spools,  and  across  others  of  the  labels  on  said  black 
spools  the  letters  and  figures  "200  yds.,"  and  on  said  red  spools  the 
letters  and  figures  "300  yards"  are  printed,  and  in  the  center  of  the 
said  label  there  is  impressed  the  figure  or  symbol  of  the  head  and 
forepart  of  a  lion  rampant.  And  in  other  of  said  specimens  the  thread 
is  put  on  spools  corresponding  in  all  particulars  to  those  herein  just 
liefore  described,  except  that  the  labels  on  the  bottom  thereof  bear  a 
coat-of-arms,  the  center  of  the  shield  whereof  contains  a  lion  rampant, 
with  three  balls  over  the  same,  and  with  the  motto  under,  "In  Deo 
Confido."  Your  orators  have  also  obtained  specimens  of  the  envelopes 
in  which  said  D.  C.'s  spurious  thread  is  put  up  and  sold  by  him  or 
his  agents,  which  bear  the  same  inscription,  letters  and  stamps  that 
those  used  and  employed  by  your  orators  bear.  And  in  all  these 
particulars  of  the  labels  on  each  end  of  the  said  spurious  spools  of 
thread,  and  the  envelopes  in  which  they  are  put  up,  they  are  exactly 


752  APPENDIX  J. 

like  the  envelopes  and  the  labels  on  the  respective  ends  of  the  spools 
of  your  orators'  genuine  Persian  Thread,  as  hereinbefore  stated.  Your 
orators  further  show  unto  your  honors  that  they  have  not  yet  ascer- 
tained the  extent  to  which  the  said  D.  C.  has  carried  his  said  fraudulent 
imitation  and  sale  of  your  orators'  said  thread.  But  your  orators' 
said  general  agent  has  found  the  same  offered  for  sale  to  the  trade  in 
at  least  six  wholesale  or  jobbing  houses  in  the  city  of  B.,  as  "Taylor's 
Persian  Thread" — from  which  your  orators  believe,  and  they  therefore 
charge,  on  their  belief,  that  the  said  D.  C.  has  been  and  is  engaged  in 
selling  his  said  fraudulent  and  spurious  imitation  of  your  orators' 
"Persian  Thread"  to  a  large  extent  in  various  places  in  the  United 
States,  with  intent  that  the  same  should  circulate  and  be  received  and 
used  by  the  public  as  Taylor's  genuine  "Persian  Thread."  And  your 
orators  further  show  unto  your  honors  that  the  fraudulent  and  in- 
equitable conduct  of  the  said  D.  C.  is  not  only  injuring  them  in  the 
sales  of  their  said  genuine  "Persian  Thread,"  and  the  profits  which 
they  would  otherwise  reasonably  make  thereon,  but  by  the  inferior 
quality  and  false  measure  the  said  spurious  "Persian  Thread"  is  greatly 
prejudicing  the  reputation  of  your  orators'  said  "Persian  Thread"  in 
the  market,  and,  unless  the  said  imitation  is  discontinued  or  prevented, 
will  ultimately  destroy  the  character  and  standing  of  the  genuine  ar- 
ticle. And  your  orators  also  charge  that  the  said  spurious  article  is  a 
fraud  and  deception  upon  such  of  the  citizens  of  the  state  of  Massa- 
chusetts, and  of  the  United  States,  as  purchase  the  same,  believing  it 
to  be  the  genuine  article  manufactured  by  your  orators.  And  your 
orators  further  show  unto  your  honors  that  in  the  month  of  March 
last  past,  having  discovered  a  portion  of  the  aforesaid  fraudulent  con- 
duct of  the  said  D.  C,  your  orators  did  file  their  bill  of  complaint  be- 
fore the  chancellor  of  the  state  of  New  York,  wherein  they  set  forth 
many  of  the  facts  which  are  in  substance  hereinbefore  stated,  and 
prayed  for  an  injunction  to  restrain  the  said  D.  C.  from  the  afore- 
said fraudulent  use  of  the  name  and  trademarks  of  your  orators,  and 
the  same  was  granted  by  the  court;  and  the  said  D.  C.  having  appeared 
and  filed  his  answer  to  the  said  bill,  did  therein  admit  that  he  had  used 
the  name  and  trademark  of  your  orators  in  manner  set  forth  in  the 
bill  aforesaid;  but  denied  that  the  article  manufactured  by  him  was  of 
inferior  quality  to  that  manufactured  by  your  orators;  and  afterwards 
an  application  was  made  to  the  chancellor  to  dissolve  the  injunction 
aforesaid,  which  last  mentioned  motion  is  now  before  the  said  chan- 
cellor, and  by  reason  of  the  great  number  of  causes  depending  before 
him,  the  aforesaid  cause  cannot  be  decided  without  great  delay.  And 
your  orators  are  informed  and  believe  it  to  be  true  that  the  said  D.  C, 
residing  out  of  the  jurisdiction  of  the  chancellor  of  the  state  of  New 
York,  can,  with  impunity,  disregard  the  injunction  aforesaid,  and  that 
he  has  continued  to  make  sales  in  the  city  of  B.  and  elsewhere  of  the 
said  thread,  put  up,  labeled,  and  appearing  precisely  like  that  made, 
put  up,  and  sold  by  your  orators,  and  your  orators  continue  to  be 
greatly  injured  thereby. 


FORMS    OF    BILLS    AND    ANSWERS.  753 

In  consideration  whereof,  and  for  as  muchi  as  your  orators  are  reme- 
diless in  tlie  premises  at  common  law,  and  cannot  have  adequate 
relief  save  by  the  aid  and  interposition  of  this  court,  to  the  end,  there- 
fore, that  the  said  D.  C.  if  he  can,  show  why  your  orators  should  not 
have  the  relief  hereby  prayed,  and  may  upon  his  corporal  oath,  and 
according  to  the  best  and  utmost  of  his  knowledge,  remembrance,  in- 
formation and  belief,  full,  true,  direct  and  perfect  answers  make  to 
the  several  interrogatories  hereinafter  numbered  and  set  forth;  and 
the  said  D.  C.  and  his  attorneys,  solicitors,  counselors,  agents  and 
servants  may  be  enjoined  and  restrained  from  manufacturing,  selling 
or  offering  for  sale,  directly  or  indirectly,  any  spool  cotton  sewing 
thread  manufactured  by  him  or  any  person  other  than  your  orators, 
under  the  denomination  of  "Taylor's  Persian  Thread,"  or  on  spools 
with  the  words,  "Taylor's  Persian  Thread,"  or  "J.  &  W.  Taylor, 
Leicester,"  or  "J.  &  W.  Taylor,"  printed,  painted,  written,  or  stamped, 
or  attached  or  pasted  thereon,  or  with  your  orators'  said  device  of  a 
lion  rampant,  or  with  their  said  coat-of-arms  thereon;  or  on  spools 
so  made  or  having  any  label,  printing  or  device  thereon,  in  such  man- 
ner as  to  be  colorable  imitations  of  your  orators'  said  spool  thread, 
usually  known  as  "Taylor's  Persian  Thread,"  and  that  the  said  D.  C. 
may  be  decreed  to  account  to  your  orators  for  all  the  profits  which 
he  has  made  by  the  sale  of  his  said  fraudulent  imitation  of  your  orators' 
thread,  and  all  the  profits  which  your  orators  would  have  made  on 
the  sales  of  their  genuine  thread  but  for  the  said  D.  C.'s  inequitable 
and  wanton  piracy  of  their  said  name,  spools  and  labels;  and  that  your 
orators  may  have  their  costs  and  charges  in  this  behalf  paid  by  the 
said  D.  C;  and  that  your  orators  may  have  such  other  and  further 
relief  in  the  premises  as  to  your  honors  shall  seem  meet,  and  shall  be 
agreeable  to  equity  and  good  conscience. 

May  it  please  your  honors  to  grant  unto  your  orators  a  writ  of 
injunction,  issuing  out  of  and  under  the  seal  of  this  court,  to  be 
directed  to  the  said  D.  C,  his  attorneys,  solicitors,  counselors,  agents 
and  servants,  therein  and  thereby  commanding  and  enjoining  them, 
under  a  certain  penalty  in  the  said  writ  to  be  expressed,  according  to 
the  foregoing  prayer  of  your  orators. 

May  it  also  please  your  honors  to  grant  unto  your  orators  a  writ 
of  subpoena,  issuing  out  of  and  under  the  seal  of  this  court,  to  be 
directed  to  the  said  D.  C,  commanding  him  on  a  certain  day  and 
under  a  certain  penalty  in  the  said  writ  to  be  inserted,  personally  to 
be  and  appear  before  your  honors  in  this  honorable  court,  then  and 
there  to  answer  the  premises,  and  to  stand  to,  abide  by.  and  perform 
such  order  and  decree  therein  as  to  your  honors  shall  seem  meet,  and 
shall  be  agreeable  to  equity  and  good  conscience. 

C.  P.  C,  of  Counsel.  J.  &  W.  T., 

C.  P.  and  B.  R.  C,  By  W.  B..  their  Agent 

Solicitors.  and  Attorney. 

48 


"34  APPENDIX  J. 


ss. 


United  States  of  America,  | 
District  of  Massachusetts,  j 

Personally  appeared  before  me  the  above-named  B.  W.,  on  this 
second  day  of  December,  A.  D.  1843,  and  made  oath  that  this  bill  in 
equity  by  him  signed,  in  as  far  as  it  states  matters  within  his  knowl- 
edge, is  true  to  his  knowledge,  and  in  as  far  as  it  states  matters 
within  his  belief,  is  true  to  his  best  belief. 

W.  W.  S.,  Commissioner,  etc. 

Interrogatories  to  be  answered  by  D.  C: 

1.  Whether  or  not  have  you  manufactured  and  sold,  in  Massachu- 
setts or  elsewhere,  thread  put  upon  black  spools,  on  one  end  of  each 
of  which  spools  is  pasted,  or  otherwise  fastened,  a  circular  paper 
label  partly  gilt,  on  which  is  printed  in  a  circle  the  words  "Taylor's 
Persian  Thread,"  and  in  the  center  thereof  the  number  of  the  thread, 
and  on  the  other  end  of  each  of  said  spools  is  pasted  or  otherwise  fast- 
ened a  circular  white  paper  label,  on  which  is  printed  in  a  circle  the 
words  "J.  &  W.  Taylor,  Leicester,"  and  across  the  same  label  "200 
yds.,"  and  in  the  center  of  the  same  label  there  is  impressed  the  figure 
or  symbol  of  a  lion  rampant? 

2.  Whether  or  not  you  have  manufactured  and  sold,  in  Massachu- 
setts or  elsewhere,  thread  put  upon  red  spools,  corresponding  in  all 
respects  to  the  black  spools  described  in  the  preceding  interrogatory, 
except  in  the  color  of  the  spool  and  in  the  quantity  of  thread  thereon; 
and  in  the  letters  and  figures  "300  yds."  printed  across  the  said*  white 
paper  label? 

3.  What  number  of  each  kind  of  the  said  spools  of  thread  have 
you  manufactured  and  sold?  State  the  same  accurately,  and  distin- 
guish the  kind  and  number  of  the  thread,  and  the  number  of  black 
spools  and  the  number  of  red  spools  so  sold  by  you  since  you 
commenced  selling  the  same,  and  the  times  when  and  the  places  where 
the  same  have  been  sold. 

4.  What  have  been  the  profits  made  or  realized  by  you  on  the  man- 
ufacture and  sale  of  thread  put  upon  spools  colored,  decorated  and 
fitted  up  in  the  manner  described  in  the  first  and  second  interrog- 
atories? 

5.  To  whom  and  what  persons  in  particular  have  you  sold  the  said 
thread  put  up  in  the  manner  described  in  the  first  and  second  inter- 
rogatories? 

6.  Who  is,  and  who  has  been,  your  agent  in  Boston  for  the  sale  of 
your  thread  put  upon  spools  fitted  up  in  the  manner  described  in  the 
first  and  second  interrogatories? 

7.  Whether  or  not  did  you  admit  in  an  answer  signed,  sworn  to  and 
filed  by  you  in  the  court  of  chancery  in  and  for  the  state  of  New 
York,  to  a  bill  of  complaint  therein  pending  wherein  the  said  J.  T. 
and  W.  T.  are  complainants,  and  yourself  is  defendant,  that  you 
have  engaged  in  the  manufacture  of  sewing  cotton  thread,  which  you 
have  caused  to  be  put  up  for  sale  on  spools  similar  to  those  used  by 


FORMS    OP    BILLS    AND    ANSWERS.  755 

the  complainants,  and  so  colored,  stamped  and  labeled  as  to  resemble 
exactly  or  as  nearly  as  the  same  could  be  done,  the  said  spools  used 
by  the  complainants,  and  the  said  spool  sewing  cotton,  which  has  been 
prepared  and  sold  by  you,  is  an  exact  imitation  of  the  same  article 
which  the  complainants  had  been  selling  in  the  United  States  many 
years   before  you  commenced  manufacturing  your  thread? 

8.  Whether  or  not  have  you  manufactured  and  sold  in  Massachu- 
setts sewing  cotton  thread  upon  black  spools  and  upon  red  spools,  on 
one  end  of  each  of  which  is  fastened  a  circular  paper  label,  described 
as  in  interrogatory  numbered  1,  and  on  the  other  end  is  fastened  a 
circular  paper  label  on  which  is  stamped  a  coat-of-arms,  the  shield 
whereof  contains  a  lion  rampant,  and  over  the  same  three  balls,  with 
the  motto  under  the  shield,  "In  Deo  Confido,"  and  around  said  shield  is 
printed  in  some  of  said  labels,  "J.  &  W.  Taylor,  Leicester,"  and  in 
others,  "J.  &  W.  Taylor,"  with  the  number  of  yards  on  said  spools? 

9.  Whether  or  not  have  you  put  up  and  sold  your  sewing  cotton 
thread,  colored,  stamped  and  labeled  in  all  or  some  of  the  modes 
described  in  this  bill  in  envelopes  or  wrappers,  some  bearing  in 
raised  letters  the  inscription,  "The  Persian  Thread,  made  by  J.  &  W. 
Taylor,  labeled  on  top  of  each  spool  Taylor's  Persian  Thread  and  on 
the  bottom  J.  &  W.  Taylor,  Leicester.  The  above  is  for  the  protec- 
tion of  buyers  against  certain  piratical  articles  of  inferior  quality, 
fraudulently  labeled  with  the  name  of  Taylor,"  and  others  bearing  a 
coat-of-arms,  the  upper  division  of  which  is  in  gilt,  and  has  three  red 
balls  thereon,  and  the  lower  division  is  red.  and  has  a  lion  rampant 
thereon.  C.  P.  and  B.  R.  C, 

Solicitors. 


BILL  OF  COMPLAINT. 

(Carson  v.  Ury,  39  Fed.  Rep.  777.) 

In  the  Circuit  Court  of  the  United  States  for  the  Eastern  Division 
of  the  Eastern  Judicial  District  of  Missouri. 

James    Carson,    Complainant, 
vs. 
Henry  Ury.  Harriet  Ury,  Richard      }     In  Equity. 

Ury,  Erskine  Mansfield  and  A. 

Beliner,  Defendants. 
J.  C,  a  resident  and  citizen  of  the  city  of  New  York,  in  the  state  of 
New  York,  files  this  his  amended  bill  of  complaint,  under  leave  of 
court  had  and  obtained,  against  the  above  defendants.  H.  U..  H.  U., 
R.  U.,  E.  M.  and  A.  B.,  all  of  whom  are  citizens  of  the  state  of  Missouri 
and  residents  of  the  city  of  St.  Louis,  in  the  eastern  division  of  the 
eastern  judicial  district  of  the  said  state,  and  thereupon  your  orator 
complains  and  says: 


756  APPENDIX  J. 

First.  That  your  orator  for  more  than  seven  years  has  been  and 
now  is  a  member  of  the  Cigar  Makers'  International  Union  of  Amer- 
ica; that  the  members  of  said  union  are  severally  cigar  makers  residing 
in  the  United  States,  and  said  union  is  a  voluntary  unincorporated 
association  of  practical  cigar  makers  formed  for  the  purpose  of  pro- 
moting the  mental,  moral  and  physical  welfare  of  the  members,  by 
assisting  them  to  obtain  labor  at  remunerative  wages,  by  affording 
them  pecuniary  aid  in  case  of  sickness  and  providing  money  in  case 
of  death,  and  generally  to  maintain  a  high  standard  of  workmanship 
and  fair  wages  of  cigar  makers. 

Second.  That  the  question  which  is  the  subject  of  this  action  is  one 
of  common  and  general  interest  to  all  members  of  the  Cigar  Makers' 
International  Union  of  America,  and  that  they  are  very  numerous, 
being  over  twenty-five  thousand  in  number,  and  that  it  is  impracti- 
cable, therefore,  to  bring  them  all  before  the  court  in  this  action. 

Third.  That  as  your  orator  is  informed  and  believes,  for  the  pur- 
pose of  designating  the  manufacturing  of  members  of  the  Cigar  Makers' 
International  Union  of  America,  the  said  union  through  its  delegates 
in  convention  assembled  in  Chicago  in  the  month  of  September,  1880, 
devised  and  adopted  a  trademark,  or  label  to  which  they  gave  the 
name  of  "Union  Label,"  a  fac-simile  of  which  is  annexed  hereto  and 
marked  "Exhibit  A;"  that  prior  to  the  adoption  of  said  label  the 
same  had  not  been  known  or  in  use  in  this  country  or  elsewhere,  and 
ever  since  said  adoption  the  members  of  the  Cigar  Makers'  Interna- 
tional Union  of  America  have  exclusively  used  said  labels,  and  the 
same  have  been  conspicuously  posted  on  the  outside  of  cigar  boxes 
containing  cigars  made  by  the  members  of  said  Cigar  Makers'  Inter- 
national Union  of  America. 

Fourth.  That  the  members  of  said  union  are  by  the  constitution  and 
laws  of  said  union  allowed  to  make  and  sell  cigars,  and  to  use  on 
such  cigars  so  made  and  sold  by  them  labels  like  said  "Exhibit  A," 
provided  they  do  not  employ  others  to  make  said  cigars;  and  that 
your  orator  for  about  two  years  last  past  has  been  making  and  selling 
cigars  in  the  city  of  New  York  aforesaid  and  has  used  there  the 
labels  like  said  "Exhibit  A,"  and  has  built  up  a  profitable  trade  for 
himself  under  said  label,  and  that  your  orator  was  the  owner  of 
the  cigars  which  he  thus  made  and  sold  under  said  label  to  the  public. 

Fifth.  That  the  said  label  affixed  to  cigar  boxes  is  intended  as  a 
guaranty  that  the  cigars  therein  contained  are  manufactured  by  mem- 
bers of  the  Cigar  Makers'  International  Union  of  America,  and  that 
good  and  clean  workmanship  has  thereby  been  secured;  and  that  the 
cigars  were  not  made  in  tenement  houses  or  state  prisons  or  by  coolies, 
and  for  these  reasons  the  cigars  so  labeled  command  a  higher  price 
in  the  market  than  cigars  of  similar  appearance,  but  without  such 
label,  can  command;  that  there  is  a  large  demand  among  the  public 
for  cigars  having  said  label,  which  demand  has  been  growing  every 
year  since  the  organization  of  said  union,  and  the  use  of  said  label 


FORMS    OF    BILLS    AND    ^VNSWERS.  757 

has  been  and  is  a  source  of  great  profit  and  advantage  to  your  orator 
and  to  the  other  members  of  said  union. 

Sixth.  That  it  is  the  practice  of  said  union  to  furnish  gratuitously 
copies  of  tne  genuine  label  marked  "Exhibit  A"  to  all  manufac- 
turers of  cigars  in  the  United  States  who  employ  exclusively  mem- 
bers of  the  said  union,  who  themselves  own  and  sell  the  cigars  which. 
they  make. 

Seventh.  That  the  wages  demanded  and  received  by  the  members 
of  said  union,  are  about  three  dollars  higher  per  one  thousand  cigars 
than  the  wages  demanded  and  received  by  other  workmen,  and  that 
union-made  cigars,  that  is,  boxes  of  cigars  carrying  the  said  labels, 
bring  in  the  market  about  three  dollars  more  per  thousand  than  such 
cigars  would  bring  without  such  labels;  that  this  is  the  case  because 
the  cigars  bearing  said  labels  are  known  to  the  public  to  be  made  by 
competent  workmen  in  clean  and  healthy  shops. 

Eighth,  That  by  the  use  of  said  genuine  labels  as  aforesaid,  your 
orator  and  other  members  of  said  union  have  made  great  profits  and 
the  public  is  protected  from  impure  and  unhealthy  cigars. 

Ninth.  That  said  union  does  not  issue  labels  to  manufacturers  em- 
ploying tenement  house  labor,  or  prison  labor,  or  coolie  labor,  or  who 
do  not  pay  the  required  scale  of  wages  demanded  by  said  union,  and 
that  said  union  does  not  sell  any  such  labels  either  to  manufacturers 
or  to  the  public. 

Tenth.  That  as  your  orator  is  informed  and  believes,  since  the 
adoption  and  use  of  said  label  by  said  union,  and  since  the  time  when 
your  orator  commenced  to  sell  cigars  bearing  said  genuine  label,  the 
said  defendants  have  conspired  and  federated  together  to  cheat  and 
defraud  your  orator  and  the  members  of  said  union  so  using  said 
label  as  aforesaid,  and  fraudulently  impose  upon  manufacturers  and 
dealers  in  cigars  and  upon  the  public  by  manufacturing  and  offering 
for  sale  and  selling  and  giving  away  for  use  on  cigar  boxes,  labels 
which  are  spurious  and  counterfeits  of  said  genuine  labels,  and  in 
furtherance  of  this  fraudulent  and  illegal  business  have  adopted  the 
name  "B.  Alberts."  That  your  orator  is  informed  and  believes  that 
the  said  name  of  B.  Alberts  is  fictitious  and  that  there  is  no  person 
of  that  name,  but  that  the  same  was  first  adopted  by  defendant  B.; 
but  however  this  may  be,  your  orator  further  says  that  said  defend- 
ants under  said  name  have  manufactured,  offered  for  sale  and  sold 
spurious  and  counterfeit  labels  for  use  as  aforesaid — a  copy  of  which 
said  spurious  and  counterfeit  label  is  hereto  annexed,  marked  "Ex- 
hibit B."  That  the  spurious  label  so  offered  and  given  away  and 
sold  by  said  defendants  under  the  said  name  of  B.  Alberts  is  a  close 
Imitation  and  counterfeit  of  the  genuine  adopted  by  said  union  as 
aforesaid.  That  the  said  defendants  have  also  lately  inserted  an  ad- 
vertisement in  the  United  States  Tobacco  Journal,  a  newspaper  pub- 
lished in  the  city  of  New  York,  state  of  New  York,  and  in  other  pub- 
lications, representing  to  the  public  that  they  had  for  sale  copies  of 
said  genuine  label,  issued  by  authority  of  said  Cigar  Makers'  Inter- 


758  APPENDIX  J. 

national  Union  of  America,  and  containing  a  representation  of  such 
label.  All  of  which  acts  of  said  defendants  are  done  without  the  au- 
thority or  permission  of  your  orator  or  the  officers  and  members  of 
said  union,  and  against  its  will  and  protest.  That  in  furtherance  of 
said  fraudulent  and  illegal  purposes,  and  with  the  intent  to  cheat  and 
defraud  as  aforesaid,  said  defendants  have  published  a  fictitious  ad- 
dress, in  said  name  of  B.  Alberts  as  aforesaid,  to  wit:  No.  222  Pine 
street,  in  the  city  of  St.  Louis,  there  being  no  person  by  the  name  of 
B.  Alberts  at  said  address,  and  have  caused  all  mail  there  received  in 
answer  to  their  advertisements  to  be  delivered  to  the  place  of  busi 
ness  of  said  defendants,  H.  U.  and  H.  U.,  with  whom,  as  your  orator 
is  informed,  the  other  defendants  are  associated  at  No.  304  North 
Main  street,  in  the  city  of  St.  Louis. 

Eleventh.  That  said  wrongful  and  fraudulent  acts  of  said  defend- 
ants, and  their  continuation,  are  calculated  to  deceive  and  mislead 
and  do  deceive  and  mislead  the  public  into  the  belief  that  said  de- 
fendants have  authority  from  said  union  to  sell  or  give  away  said 
genuine  labels,  and  further  tend  to  deceive  the  public  into  the  belief 
that  the  cigars  thus  labeled  by  the  purchasers  of  said  labels  from 
the  defendants  are  the  cigars  made  and  sold  by  your  orator  and  such 
other  makers  of  cigars  as  have  authority  to  use  the  genuine  label  of 
said  union;  and  they  further  tend  to  deceive  the  public  into  the  belief 
that  the  false  and  spurious  labels  sold  and  offered  for  sale,  or  given 
away  by  said  defendants,  are  the  genuine  labels  of  said  union. 

Twelfth.  That  your  orator  has,  and  the  other  members  of  said 
Cigar  Makers'  International  Union  of  America  have,  a  valued  and 
pecuniary  interest  in  the  genuine  labels  issued  by  said  union,  and  used 
by  the  members  thereof,  and  that  he  has,  and  they  have,  suffered  irre- 
parable damage  by  the  wrongful  acts  of  said  defendants,  and  that, 
if  suffered  to  continue,  the  wrongful  acts  of  said  defendants  will  tend 
to  produce  further  irreparable  damage  to  your  orator  and  to  the  other 
members  of  said  Cigar  Makers'  International  Union  of  America. 

Thirteenth.  That  your  orator  has  no  adequate  remedy  at  law  for 
said  injury. 

Fourteenth.  That  said  injury  cannot  be  adequately  compensated 
in  money,  but  your  orator  alleges  that  the  matters  in  dispute  and 
Injury  to  him,  exclusive  of  interest  and  costs,  exceed  the  sum  of  two 
thousand  dollars. 

Fifteenth.  That  as  your  orator  is  informed  and  believes,  one  or 
more  of  said  defendants,  prior  to  the  commencement  of  said  wrongful 
acts,  were  members  of  said  union  and  well  acquainted  with  its  con- 
stitution, by-laws  and  practice,  but  are  not  now  members  of  caid 
union. 

Sixteenth.  And  your  orator  further  shows  unto  your  honors  on  in- 
formation and  belief,  that  said  defendants  have  made  and  sold,  and 
caused  to  be  made  and  sold,  large  quantities  of  said  labels,  and  have 
large  quantities  on  hand,  which  they  are  now  offering  for  sale,  and 
have  made  and  realized  large  profits  and  advantages  therefrom;  but 


FORMS    OF    BILLS    AND    .VNSWERS.  759 

to  what  extent  and  how  much  exactly  your  orator  does  not  know  and 
prays  a  discovery  thereof;  and  that  said  labels  have  been  used  by 
many  manufacturers  of  cigars  in  the  sale  of  cigars  which  were  not 
made  by  your  orator  or  by  any  member  of  the  Cigar  Makers'  Inter- 
national Union  of  America. 

Seventeenth.  And  your  orator  further  says  that  the  use  and  sale  of 
said  labels  by  said  defendants,  and  their  preparation  for  and  avowed 
determination  to  continue  the  same,  and  their  other  aforesaid  and 
unlawful  acts  in  disregard  and  defiance  of  your  orator,  have  the  effect 
to  and  do  encourage  and  induce  others  to  disregard  your  orator's 
rights  in  the  premises. 

And  your  orator  prays  that  said  defendants,  H.  U.,  H.  U.,  R.  U., 
E.  M.  and  A.  B.,  their  servants,  agents,  attorneys  and  workmen,  and 
each  and  every  of  them,  may  be  restrained  and  enjoined  provisionally 
and  perpetually,  by  the  order  and  injunction  of  this  honorable  court, 
from  directly  or  indirectly  making,  using,  vending,  delivering  or  in 
anywise  counterfeiting  or  imitating  said  genuine  label  of  the  Cigar 
Makers'  International  Union  of  America,  or  from  making,  selling  or 
offering  for  sale  or  giving  away  any  labels  like  or  similar  to  those 
issued  by  said  Cigar  Makers'  International  Union  of  America,  and  that 
the  defendant  may  be  decreed  to  pay  the  costs  of  this  suit,  and  that 
your  orator  may  have  such  further  or  such  other  relief  as  to  this 
honorable  court  shall  seem  meet  and  as  shall  seem  agreeable  to 
equity. 

An  answer  under  oath  is  hereby  expressly  waived. 

May  it  please  your  honors  to  grant  unto  your  orator  the  writ  of  in- 
junction, as  well  provisional  as  perpetual,  issuing  out  of  and  under 
the  seal  of  this  honorable  court,  commanding,  enjoining  and  restrain- 
ing said  defendants,  H.  U.,  H.  U.,  R.  U.,  E.  M.  and  A.  B.,  command- 
ing them  by  a  certain  day  and  under  certain  penalty  to  be  and  appear 
in  this  honorable  court  thee  and  there  to  answer  the  premises  and  to 
stand  to  and  abide  such  order  and  decree  as  may  be  made  against 
them. 

And  your  orator  will  ever  pray,  etc. 

A.  K.,  of  Counsel.  B.,  S.  &  K., 

Complainants'  Solicitors, 
with  whom  are  H.  O.  & 
State  of   New   York 
Southern  District  of  New  York 
City  and  County  of  New  York 

J.  C,  being  duly  sworn,  says  that  he  is  the  complainant  named  in 
the  foregoing  complaint,  that  he  has  read  said  complaint,  and  that 
the  allegations  contained  therein  are  true  except  those  which  are 
stated  therein  to  be  alleged  on  information  and  belief,  and  as  to  those 
he  believes  said  complaint  to  be  true. 
Sworn  to  before  me  this  23d  day  of  March,  1889. 

H.  M.  T., 
Notary  Public  of  New  York  County. 


■1 


760  APPENDIX  J. 

BILL  OF  COMPLAINT. 
(McLean  v.  Fleming,  96  U.  S.  245.) 

To  the  Judges  of  the  Circuit  Court  of  the  United  States  within  and  for 

the  District  of  Missouri. 

C.  F.  of  Pittsburg,  in  the  State  of  Pennsylvania,  a  citizen  of  said 
State,  brings  this  his  bill  of  complaint  against  J.  H.  McL.,  of  St.  Louis, 
in  the  Eastern  District  of  Missouri,  and  a  citizen  of  the  State  of 
Missouri,  and  thereupon  your  Orator  complains  and  says  that  he  is 
now,  and  for  the  last  sixteen  months  has  been  extensively  engaged  in- 
dividually in  the  manufacture  of  a  certain  pill,  designated  and  known 
in  trade  and  by  public  advertisement,  and  by  dealers  and  consumers 
as  "Dr.  C.  McLane's  Liver  Pills,"  and  that  said  pills  have  become  very 
extensively  known  and  used  in  the  United  States  and  in  other  coun- 
tries. 

Your  Orator  states  further  that  said  pills  were  first  made  and  sold 
by  Dr.  Charles  McLane,  at  Morgantown,  Virginia,  where  said  Mc- 
Lane  resided — that  said  McLane  was  the  original  and  exclusive  in- 
ventor and  proprietor  of  said  pills,  and  first  made  and  sold  the  same 
by  the  name  and  description  of  "Dr.  McLane's  Liver  Pills,"  and  by 
that  name  they  were  known  and  designated  and  were  made  and  sold 
only  by  said  Dr.  Charles  McLane,  till  June  19th,  1844,  when  said  Mc- 
Lane, by  bill  of  sale  of  that  date,  sold  his  interest  therein  to  one  J. 
K.  of  Pittsburg,  Pennsylvania,  giving  said  K.  the  right  to  make  and 
vend  the  same  in  the  United  States,  reserving  only  the  privilege  of 
making  and  vending  the  same  himself  in  Morgantown,  aforesaid,  as 
will  appear  by  said  bill  of  sale,  a  copy  of  which  is  herewith  filed 
marked  A.,  and  thereby  said  J.  K.  became  the  sole  owner  and  proprietor 
thereof  with  the  exclusive  right  to  make  and  sell  the  same  and  to  use 
the  name  thereof,  excepting  only  the  personal  privilege  reserved  as 
aforesaid,  and  thereupon  said  K.  began  at  Pittsburg,  Pennsylvania,  the 
manufacture  and  sale  of  said  pills,  according  to  the  recipe  of  said 
Dr.  McLane,  and  continued  such  manufacture  at  said  place  till  about 
the  11th  day  of  April,  1845,  when  said  K.  formed  a  partnership  with 
one  J.  F.  under  the  name  and  style  of  J.  K.  &  Co.,  and  said  K.  Invested 
said  firm  with  the  full  right  to  make  and  sell  said  pills,  and  to 
use  the  name  thereof,  and  said  firm  engaged  largely  in  the  business 
of  making  and  selling  said  pills,  and  in  order  to  designate  the  same  as 
an  article  of  their  own  manufacture,  and  to  prevent  imposition  and 
fraud  upon  the  public  and  persons  desiring  to  purchase  the  same, 
said  firm,  during  or  before  the  year  1847  commenced  putting  up  said 
pills  in  wooden  boxes  of  uniform  size,  shape  and  appearance,  having 
perpendicular  sides,  with  top  and  bottom  of  elliptical  shape,  said  box 
containing  twenty-two  pills,  and  caused  the  words  "McLane's  Liver 
Pill"  to  be  stamped  in  red  wax  upon  the  cover  of  each  box;  and  in 
further  pursuance  of  their  said  design  to  designate  said  pill  as  the 
genuine  article  so  manufactured  by  them  as  aforesaid,  said  firm  pro- 


FORMS    OF    BILLS    AND    ANSWERS.  761 

cured  at  their  own  expense  certain  plates,  and  caused  to  be  made  there- 
from a  certain  token-label  or  trademark,  consisting  of  a  wrapper  which 
was  placed  by  them  around  each  box  of  pills,  and  which  was  printed 
with  ink  of  a  light  red  color;  the  portion  thereof  covering  the  top  of 
each  box  being  engraved  with  a  narrow  border  of  scalloped  pattern, 
surrounding  a  panel  with  background  or  wave  line  engraving,  and 
with  the  words  "Dr.  McLane's  Celebrated  Liver  Pills.  In  sick  head- 
ache and  in  all  bilious  complaints  surpassed  by  none — 25  cts.,"  en- 
graved thereon  and  appearing  in  white  letters  shaded  by  red  lines; 
and  on  the  portion  of  said  wrapper  covering  the  rear  side  of  the  box 
a  panel  of  similar  background  surrounded  by  a  border  of  dark  red 
and  white  lines  appearing  interlaced  or  woven,  and  with  the  words 
following  to  wit:  "In  future  my  liver  pills  will  have  a  red  steel  en- 
graved wrapper,  and  my  name  in  red  wax  on  each  box,"  appearing 
thereon  in  white  letters  shaded  by  red  lines,  and  having  also  a  fac- 
simile of  the  signature  of  C.  McLane  engraved  and  printed  in  red 
ink  at  the  bottom  thereof;  and  upon  the  portion  of  the  said  wrapper 
covering  the  front  side  of  the  box  a  panel  with  a  border  and  back- 
ground similar  to  that  last  mentioned,  having  the  words  "Prepared  for 
the  proprietor  by  J.  K.  &  Co.,  No.  60  Wood  St.,  Pittsburg,  Pa.,"  there- 
on in  white  letters  shaded  with  red  lines  and  also  the  words  "None 
can  be  genuine  without  the  signature  of  J.  K.  &  Co."  printed  thereon 
in  red  ink  the  words  "J.  K.  &  Co."  being  a  facsimile  of  said  firm's 
signature.  A  copy  of  said  label  is  hereto  annexed  marked  "B,"  and 
made  part  hereof,  one  cf  which  labels  or  trademarks  was  placed  on 
and  around  each  box  of  said  pills  made  and  sold  by  said  firm. 

The  said  firm  being  thus  the  sole  and  exclusive  owners  of  said  pills 
and  of  the  recipe  for  making  the  same,  and  of  the  said  token-label  or 
trademark,  and  the  plates  for  the  same,  exclusively  made,  put  up 
and  sold  said  pills  and  said  label  and  trademark  thereon,  and  brought 
the  same  into  notice,  and,  by  the  expenditure  of  large  sums  of  money 
in  advertising  and  by  the  exercise  of  energy  and  skill,  they  gave 
to  said  pills  a  wide  and  enviable  reputation,  and  they  derived  from  the 
manufacture  and  sale  thereof  large  profits. 

Your  Orator  states  further  that  on  the  29th  day  of  March,  1853,  said 
J.  K.  died  leaving  the  said  J.  F.  the  sole  surviving  partner  of  said  firm 
of  J.  K.  &  Co.,  who  continued  the  business  of  said  firm,  and  on  or 
.about  the  30th  day  of  April,  1853,  the  executors  of  said  J.  K.  for  the 
sum  of  thirty-four  thousand  dollars,  and  other  considerations,  conveyed 
to  said  surviving  partner,  J.  F.  and  to  your  Orator  jointly,  who  formed 
a  partnership  under  the  name  and  style  of  F.  Bros.,  all  the  right,  title 
interest  and  claim  of  said  J.  K.  in  and  to  the  goods,  chattels,  notes, 
accounts,  claims,  rights,  and  credits  of  every  description  belonging  to 
the  late  firm  of  J.  K.  &  Co.  in  the  drug  business  in  Pittsburg  afore- 
said, as  will  appear  by  bill  of  sale  thereof  dated  April  30th,  1853,  a 
<;opy  of  which  is  hereto  annexed  and  marked  "C." 

Under  said  bill  of  sale,  said  J.  F.  and  C.  F..  composing  the  firm  of 
F.  Bros.,  at  once  took  possession  of  the  business  of  making  and  selling 


762  APPENDIX  J. 

said  "Dr.  McLane's  Liver  Pills."  and  of  said  plates,  tokens,  labels  and 
trademarks,  and  thereby  became  the  exclusive  owners  of  the  same 
and  of  the  right  to  make  and  sell  the  same  with  the  said  labels,  tokens, 
and  trademarks  thereon,  except  the  right  reserved  by  the  said  Dr. 
Charles  McLane  as  aforesaid.  On  or  about  January  11th,  1854,  L.  W. 
Jr.,  became  a  partner  in  the  said  firm  of  F.  Bros,  and  afterwards  said 
Dr.  C.  McLane  relinquished  to  said  F.  Bros,  all  his  right  thereto, 
and  further  recognized  and  confirmed  to  said  F.  Bros,  the  full  and 
exclusive  right  in  said  pills  and  said  labels  and  trademarks,  by  con- 
tract dated  January  8th,  1857,  a  copy  of  which  is  herewith  filed  marked 
"D." 

Said  firm  of  F.  Bros,  greatly  enlarged  the  business  of  making  and 
selling  said  pills  until  the  year  1855,  since  which  time  until  the  year 
1872,  while  putting  them  up  in  boxes  of  the  same  material  size  and 
shape  as  already  hereinbefore  described,  and  placing  a  seal  with  the 
words  "McLane's  Liver  Pills"  stamped  in  red  wax  upon  the  cover  of 
each  box  containing  said  pills  as  before  described,  they  folded  around 
each  box  a  circular  containing  remarks  upon  the  nature  and  effect  of 
said  pills  and  the  diseases  for  which  they  are  recommended  with  di- 
rections for  their  use,  printed  in  the  English,  German,  French  and 
Spanish  languages,  a  copy  of  which,  circular  is  hereto  attached  and 
marked  "E;"  and  in  order  to  still  further  and  more  readily  distinguish 
article  of  pills  manufactured  by  them  as  aforesaid,  as  of  their  own 
manufacture,  they  procured  new  steel  plates  and  caused  to  be  printed 
therefrom  labels  or  trademarks  forming  an  external  wrapper,  con- 
sisting of  a  fine  steel  engraving  with  a  facsimile  of  the  signatures  of 
C.  McLane  and  said  firm  of  F.  Bros,  engraved  thereon,  the  ground 
work  of  said  engraved  wrapper  on  the  top  of  the  box  being  com- 
posed of  fine  lines  crossing  the  box  diagonally  and  at  right  angles 
with  each  other  and  the  words  "Dr.  C.  McLane's  celebrated  liver 
pills,  in  sick  head-ache  and  in  all  bilious  complaints  surpassed  by 
none.  Price  25  cts."  engraved  thereon,  showing  the  letters  and  figures 
in  white,  the  said  words  "celebrated  liver  pills"  being  upon  a  scroll 
similar  to  a  double  ogee  in  form,  v^^itli  black  back-ground.  On  said 
engraved  wrapper  covering  one  side  of  said  boxes,  said  firm  caused  to 
be  engraved  and  printed  the  words:  "Prepared  only  by  F.  Bros,  suc- 
cessors to  J.  K.  &  Co."  all  in  white  letters,  also  a  facsimile  of  their 
signature  in  black,  and  the  words  "without  whose  signature  none  can 
be  genuine"  printed  in  black  letters,  and  on  the  opposite  side  of  said 
boxes  are  printed  other  words  in  white  letters  as  follows:  "In  future 
my  genuine  liver  pills  will  have  a  fine  steel  engraved  wrapper,  and 
my  name  in  red  wax  on  each  box,"  with  a  facsimile  of  the  signature 
of  C.  McLane  in  black  script,  a  copy  of  which  label  is  hereto  attached 
marked  "F." 

The  business  of  making  and  selling  s'aid  pills  with  said  labels, 
tokens,  and  trademarks  thereon,  was  carried  on  by  said  firm  of  F. 
Bros,  from  the  30th  day  of  April.  1853,  in  their  said  firm  name,  and 
said  firm  from  said  last  mentioned  date,  owned  and  held  among  their 


FORMS    OP    BILLS    AND    ANSWERS.  763 

firm  assets  the  right  of  making  and  selling  said  pills  and  using  there- 
on said  tokens,  labels,  and  trademarks,  notwithstanding  the  changes 
that  were  made  from  time  to  time  from  said  30th  day  of  April,  1853, 
until  the  present  time,  in  the  individual  members  of  said  firm  which 
were  as  follows: 

On  the  11th  day  of  January,  A.  D.  1854,  L.  W.  Jr.  became  a  member 
of  said  firm,  which  was  composed  of  said  J.  F.,  C.  F.  and  said  W., 
until  the  12th  day  of  October,  1857,  when  said  L.  W.  Jr.  withdrew  from 
said  firm,  and  in  consideration  of  the  sum  of  seventeen  thousand  dol- 
lars conveyed  to  said  J.  F.  all  his  right,  title  and  interest  and  claim 
of,  in  and  to  the  property,  assets  and  effects  whatever  of  said  firm  of 
F.  Bros,  including  the  right  to  make  and  sell  said  pills,  and  to  use  said 
tokens,  labels,  and  trademarks,  as  will  appear  by  said  W.  bill  of  sale 
of  that  date,  a  copy  of  which  is  hereto  attached,  marked  "F2,"  and 
from  and  after  said  12th  day  of  October,  1857,  said  firm  composed  of 
said  J.  F.  and  C.  F.  carried  on  the  business  of  making  and  selling 
said  pills,  put  up  as  aforesaid  with  said  labels  thereon,  until  the  first 
day  of  July,  A.  D.  1865.  when  said  C.  F.  withdrew  from  said  firm,  and 
in  consideration  of  the  sum  of  thirty-five  thousand  dollars,  relinquished 
to  said  J.  F.  all  his  said  C's.  Interest,  right  title  or  claim  in  and  to 
all  the  property  and  assets  of  said  firm  of  F.  Bros.,  and  said  J.  F.  there- 
after, under  said  firm  name  of  F.  Bros.,  continued  to  carry  on  the  busi- 
ness of  making  and  selling  and  putting  up  said  pills  as  above  described 
at  Pittsburg,  Pa.,  till  about  the  2nd  day  of  November.  1870.  when  the 
said  J.  F.  died,  and  by  will,  a  copy  of  which  is  herewith  filed  marked 
"G"  and  made  part  hereof,  bequeathed  to  your  Orator  the  good-will 
and  proprietorship  of  McLane's  and  other  medicines,  owned  and  con- 
trolled by  him,  which  included  said  Liver  Pills,  and  the  right  to  make, 
put  up  and  sell  the  same  as  described  last  aforesaid,  upon  certain  con- 
ditions; in  effect  that  your  Orator  should  take  charge  of  and  carry  on 
said  business,  and  pay  off  the  pecuniary  legacies  given  in  said  will, 
all  of  which  your  Orator  has  done,  and  by  his  said  will,  said  J.  F. 
bequeathed  to  your  Orator  after  payments  of  the  legacies  of  said  will, 
all  the  residue  of  his  estate,  and  thereby  your  Orator  became,  and  is 
now,  the  sole  and  exclusive  owner  and  proprietor  of  said  pills,  and  the 
recipe  for  making  the  same,  and  of  said  tokens,  labels  and  trademarks, 
and  the  plates  therefor,  and  has  the  sole  and  exclusive  right  to  make 
and  sell  said  pills  and  to  use  said  labels,  tokens,  and  trademarks,  and 
as  residuary  legatee  of  said  J.  F.,  your  Orator  is  entitled  to  recover 
all  damages  or  profits,  that  accrued  to  him  in  his  lifetime,  or  to  said 
firm  of  F.  Bros. 

And  your  Orator  has,  since  the  death  of  said  J.  F..  continued,  and 
still  continues  the  business  of  making  and  selling  said  pills  and  using 
thereon  the  said  label  and  trademark  under  the  said  name  of  F.  Bros., 
as  hereinbefore  described,  and  your  Orator  is  now  using  said  label  as 
shown  by  Exhibit  "F."  with  these  exceptions  only  that  within  the  last 
few  months,  he  has  used  and  now  uses  as  a  ground  work  on  his  labels 
shaded  curved  lines  cutting  and  crossing  each  other  In  such  a  way  as 


764  APPENDIX  J. 

to  produce  the  effect  of  alternate  light  and  shade  crossing  the  top  of 
the  box  diagonally,  in  place  of  straight  lines  crossing  each  other 
diagonally  as  hereinabove  described,  and  he  now  omits  on  his  labels 
as  now  used  by  him  the  words  "Successors  of  J.  K.  &  Co."  and  has  also 
substituted  "24"  in  place  of  "60"  as  the  number  of  Wood  street,  as 
will  appear  in  Exhibit  "H"  hereto  annexed,  and  that  both  said  firm  of 
F.  Bros,  until  the  death  of  J.  F.,  and  from  that  time,  your  Orator  doing 
business  in  said  firm  name  as  aforesaid,  have,  since  the  passage  of  the 
Act  of  Congress  requiring  the  same,  placed  across  the  bottom  and 
ends  of  each  box  of  said  pills  when  put  up  for  sale,  and  over  the  folds 
of  the  external  wrapper,  their  proprietary  United  States  Revenue  stamp. 
And  your  Orator  says  that  being  the  sole  and  exclusive  owner  and' 
proprietor  of  said  pills  and  of  the  recipe  for  making  the  same  and  of 
said  tokens,  labels  and  trademarks,  and  the  plates  therefor  as  afore- 
said, and  having  the  sole  and  exclusive  right  to  make  and  sell  said 
pills  prepared  and  put  up  as  aforesaid,  with  said  tokens,  labels  and 
trademarks  thereon,  your  Orator  hoped  he  might  be  permitted  to  ex- 
clusively manufacture  and  sell  the  same  as  put  up.  and  to  exclusively 
use,  for  the  purpose  of  indicating  the  origin  of  said  pills,  said  tokens, 
labels  and  trademarks,  but  the  Defendant,  with  the  intent  to  injure 
and  defraud  your  Orator  in  the  premises,  and  to  reap  the  advantages, 
benefits  and  profits  of  the  credit  and  reputation  of  said  pills,  is  now 
engaged,  and  has  been  engaged  for  some  time,  to  wit — a  period  un- 
known to  your  Orator,  but  believed  by  him  to  be  several  years,  making 
and  vending,  and  causing  to  be  vended  by  others,  a  spurious,  counter- 
feit and  inferior  article  of  pills,  prepared  in  imitation  of  and  calculated 
and  intended  to  be  sold  as  the  genuine  "Dr.  C.  McLane  Liver  Pills," 
of  your  Orator's  own  manufacture,  and  having  thereon  a  false,  forged 
and  counterfeit  token-label  or  trademark,  made  in  Imitation  of  and 
closely  resembling  that  of  your  Orator,  so  as  to  enable  the  Defendant 
to  reap  the  benefits  and  profits  of  the  credit  and  reputation  of  the 
genuine  pills  made  and  sold  by  your  Orator,  and  his  predecessors  in 
ownership,  as  aforesaid  at  great  expense,  and  when  thus  prepared,  the 
defendant  has  sold,  and  is  now  selling  and  causing  to  be  sold,  said 
spurious  and  counterfeit  pills  as  the  genuine  article  of  your  Orator's 
own  manufacture,  intending  to  deceive  and  thereby  actually  deceiving 
the  public  and  customers  of  your  Orator,  and  supplanting  your  Orator's 
trade  and  injuring  him  to  a  large  amount,  but  which  your  Orator  is  un- 
able to  state  or  fix  without  a  statement  or  account  of  the  amount  of 
sales  made  as  aforesaid  by  said  Defendant. 

And  the  Defendant,  for  the  purpose  of  more  completely  and  effec- 
tually deceiving  the  public,  and  persons  wishing  to  buy  the  genuine 
pills  of  your  Orator's  own  manufacture,  puts  up  his  said  false,  counter- 
feit and  spurious  pills  in  boxes  of  the  same  material,  size  and  shape 
as  those  used  by  your  Orator  as  aforesaid,  and  places  upon  the  cover 
of  each  box  a  seal  in  red  wax  of  the  same  style,  size,  and  appearance 
as  the  red  seal  used  by  your  Orator  as  aforesaid,  and  which  is  specially 
used  and  referred  to  by  your  Orator  in  his  circulars  and  advertisements, 


FORMS    OF    BILLS    AND    ANSWERS.  765 

and  relied  upon  by  him  to  indicate  to  the  public  and  his  customers, 
the  genuine  article  of  pills,  made  and  sold  by  your  Orator  as  afore- 
said, and  while  endeavoring  completely  to  deceive  the  public  and  those 
seeking  the  genuine  pills  of  your  Orator,  by  the  use  of  the  red  seal  so 
placed  upon  the  cover  of  the  boxes  used  by  the  Defendant,  as  aforesaid, 
he  seeks  to  shield  himself  from  the  inevitable  consequence  of  his  at- 
tempt to  injure  and  defraud  your  Orator  by  using  a  stamp  impressing 
in  faint  and  obscure  letters  on  said  red  wax  the  words  "J.  H.  McLean, 
St.  Louis,"  which  are  yet  as  illegible  as  not  to  undeceive  those  who 
are  cheated  into  supposing,  from  the  mere  pressure  of  the  seal  on  the 
cover  of  the  box,  that  the  same  contains  the  genuine  pills  manufactured 
by  your  Orator,  and  the  Defendant  places  around  the  boxes  of  pills  so 
put  up  by  him,  a  circular  printed  in  the  English,  German,  French,  Span- 
ish and  other  languages,  a  copy  of  which  is  hereto  attached  marked 
"J,"  and  encloses  the  whole  with  a  wrapper  consisting  of  a  lithograph 
impression  similar  in  general  appearance  to  the  outer  wrapper  used 
by  your  Orator,  the  body  thereof  being  formed  like  that  of  your  Orator, 
of  lines  crossing  the  box  diagonally  and  at  right  angles  to  each  other, 
with  the  words  "Dr.  J.  H.  McLean's  Universal  pills  or  vegetable  liver 
pills,  prepared  only  by  Dr.  J.  H.  McLean,  No.  314  Chestnut  Street,  St. 
Louis,  Mo."  printed  thereon  across  the  top  of  each  box  in  white  letters; 
the  words  "Universal  pills"  being  upon  a  background  of  black  and  on 
a  strip  or  scroll  circular  in  form;  the  whole  presenting  a  -general  ap- 
pearance similar  to  the  label  covering  the  top  of  the  box  used  by  your 
Orator   as  aforesaid,   while  upon  the  label  covering  the  side  of  said 
boxes  put  up  by  Defendant,  are  printed  the  words,  "To  prevent  coun- 
terfeiting I  have  changed  the  color  of  my  label"  In  white  letters  upon, 
a  dark  back  ground,  such  as  is  used  by  your  Orator,  and  with  the  De- 
fendant's name  "Dr.  J.  H.  McLean"  signed  in  black  script,  but  in  such 
obscured  lettering  as  to  be  almost  illegible;    and  on  the  label  covering 
the  other  side  of  said  box,  the  Defendant  causes  to  be  printed  in  white 
letters,   in  style   and   appearance   resembling  the   label  used   by   your 
Orator,  the  words  "For  the  cure  of  liver  complaint,  head-ache,  bilious 
diseases,  etc."     A  copy  of  said  counterfeit    label    is    hereto  attached 
marked  "K." 

And  your  Orator  avers  that  the  Defendant  caused  to  be  printed  and 
uses  said  label  as  aforesaid,  as  your  Orator  believes  and  charges  the 
fact  to  be,  for  the  sole  purposes  of  enabling  him  to  defraud  your  Orator 
of  trade  and  profit  by  selling  his  spurious  and  counterfeit  goods  as  and 
for  the  goods  so  advertised,  manufactured  and  sold  by  your  Orator. 

And  your  Orator  further  says  that  the  illegal  and  wrongful  acts  set 
forth  and  complained  of  aforesaid,  are  but  the  carrying  out  of  fraud- 
ulent designs  of  the  Defendant,  which  he  long  ago  conceived  for  the 
purpose  of  drawing  your  Orator's  trade  to  himself  by  the  wrongful  use 
of  fraudulent  imitations  of  said  tokens,  labels  and  trademarks  of  your 
Orator,  and  in  furtherance  of  the  purpose,  as  your  Orator  believes  and 
charges  the  fact  to  be,  the  Defendant  did,  prior  to  the  year  1855  print 
or  cause  to  be  printed  a  certain  false  or  counterfeit  label,   token  or 


766  APPENDIX  J. 

trademark,  in  imitation  of  or  closely  resembling  the  token  label  and 
trademark  then  and  for  many  years  theretofore  exclusively  used  and 
owned  by  J,  K.  &  Co.  aforesaid,  being  the  label  of  a  light  red  color 
hereinbefore  fully  described  and  referred  to  as  Exhibit  "B."  And  De- 
fendant placed  said  false  and  counterfeit  labels  on  boxes  of  pills  of 
his  own  manufacture,  which  boxes  were  similar  to  the  boxes  then  used 
by  said  J.  K.  &  Co.,  and  on  the  lid  of  each  box  of  pills  so  put  up  and 
sold  by  him  he  placed  a  seal  stamped  in  red  wax  in  imitation  of  that 
used  by  said  K.  &  Co.  as  aforesaid,  and  then  wrapped  each  box  of  pills 
in  one  of  the  counterfeit  labels  last  above  described,  which  label  con- 
sisted of  an  engraved  wrapper  printed  with  ink  of  a  light  red  color, 
nearly  resembling  in  shade  and  general  appearance  that  used  by  said 
K.  &  Co.  and  with  the  words  "Dr.  McLean's  Universal  pills  for  cure 
of  liver  complaint,  headache,  bilious  diseases,  etc."  printed  on  the 
portion  covering  the  top  of  each  box,  in  white  letters  shaded  by  a  red 
line,  and  below  the  above,  the  words  "Price  (see  directions  inside) 
25  cts."  On  the  side  of  the  box  were  printed  on  the  wrapper  the  words 
"Dr.  McLean's  Universal  pillen  zur  heilung  von  Leber  Krankheiten 
Kopfweh  bilosen  Kraukheiten  U.  L.  W."  appearing  in  white  letters 
shaded  by  red  lines,  as  in  the  genuine  label,  and  with  the  words 
"Vorschrift  auf  der  innern  seite"  printed  in  red  letters  underneath, 
while  on  the  portion  of  said  wrapper  covering  the  opposite  side  of  said 
box  are  printed  the  words  "Prepared  by  J.  H,  McLean,  N.  E.  Corner 
3rd  and  Pine  Sts.,  St.  Louis,  Mo." 
A  copy  of  said  label  is  hereto  attached  marked  "L." 
And  your  Orator  believes  and  charges  that  the  Defendant  procured 
and  used  the  said  last  described  label  solely  for  the  purpose  of  deceiv- 
ing the  public  and  those  wishing  to  buy  the  genuine  pills  made  and  sold 
as  aforesaid  by  said  J.  K.  &  Co.,  but  he  says  that  Defendant's  fraud- 
ulent designs  were  to  some  extent  frustrated  and  the  effects  of  his 
wrongful  acts  partially  averted  from  the  rightful  proprietor  of  said 
label  and  trademark  by  the  circumstances  of  the  said  firm  of  F.  Bros, 
in  the  year  1855,  having  changed  the  label  and  wrapper  used  by  them 
and  by  said  J.  K.  &  Co.  prior  to  that  time,  and  adopted  the  label 
lately  used  by  your  Orator  as  aforesaid,  but  your  Orator  says  that  after 
the  adoption  by  him  of  said  last  named  label  as  aforesaid,  the  Defend- 
ant continued  for  many  years  to  use  the  red  label  procured  and  used 
by  him  in  imitation  of  the  trademark  used  by  said  firm  of  F.  Bros,  as 
aforesaid,  but  finding  the  carrying  on  of  his  said  business  unprofitable 
while  he  was  using  his  said  fraudulent  red  label,  and  your  Orator  was 
using  the  dark  label  above  described,  Defendant  conceived  the  design 
of  changing  the  color  of  his  label,  and  adopting  in  place  of  the  red 
label  theretofore  used  by  him,  another  dark  label  in  imitation  of  the 
label  or  trademark  of  your  Orator,  which  was  done,  as  your  Orator  be- 
lieves and  charges  for  the  purpose  of  wrongfully  diverting  the  trade 
of  your  Orator  to  himself  and  enabling  him  to  sell  his  goods  as  and 
for  the  goods  manufactured  and  sold  by  your  Orator,  and  not  for  the 


FORMS    OF    BILLS    AND    ANSWERS.  767 

purpose   of   preventing   counterfeiting  as   Defendant  falsely   publishes 
on  his  own  fraudulent  label. 

Your  Orator  states  further  that  said  Defendant  was  never  authorized 
by  him  to  make,  put  up,  or  sell  said  pills  as  of  your  Orator's  own 
manufacture,  or  to  use  or  make  said  tokens,  labels  or  trademarks  in 
imitation  of  or  resemblance  to  those  of  your  Orator  as  said  Defendant 
is  charged  to  have  done  above,  nor  to  make  or  sell  any  such  false  or 
counterfeit  pills  with  such  false  or  counterfeit  labels  attached  thereto, 
but  said  Defendant  well  knows  that  your  Orator  is  now,  and  his  pred- 
ecessors were,  the  sole  and  exclusive  proprietors  of  Dr.  C.  McLane's 
celebrated  liver  pills  and  of  the  said  labels  and  trademarks,  marked 
"B"  and  "F"  as  hereinbefore  set  forth,  and  said  Defendant  also  well 
knows  that  said  false  and  counterfeit  labels  or  trademarks  used  by 
him  are  mere  imitations  of  the  labels  and  trademarks  of  your  Orator 
and  his  predecessors,  made,  contrived  and  got  up  by  said  Defendant 
with  the  intent  to  deceive  the  public  and  purchasers  thereof,  and  to 
defraud  your  Orator. 

All  of  which  said  acts  and  things  and  pretenses  are  against  equity 
and  good  conscience,  and  a  great  loss  and  damage  to  your  Orator,  and 
inasmuch  as  your  Orator  is  without  full  redress  at  law,  and  can  only 
obtain  adequate  relief  in  equity,  and  as  he  avers  that  a  continuance  of 
the  acts  aforesaid,  will  occasion  irreparable  loss  and  injury  to  him;  to 
the  end,  therefore,  that  the  said  Defendant  may,  if  he  can,  show  why 
your  Orator  should  not  have  the  relief  hereby  prayed,  and  may  upon 
his  corporal  oath,  and  according  to  the  best  and  utmost  of  his  knowl- 
edge, remembrance,  information  and  belief,  full,  true  and  perfect 
answer  make  to  all  the  allegations  hereof,  and  to  the  several  interrog- 
atories hereinafter  numbered  and  set  forth;  that  is  to  say: 

(Interrogatories  and  prayer  for  relief). 

M.  L.  G.  &  D.. 

Solicitors  for  Complainant. 


BILL  OF  COMPLAINT. 

(Richmond  Nervine  0».  v.  Richmond,  159  U.  S.  293). 

To  the  Judges  of  the  Circuit  Court  of  the  United  States  for  the  South- 
ern District  of  Illinois: 

The  Dr.  S.  A.  R.  Nervine  Co.,  of  Saint  Joseph,  Missouri,  a  corpora- 
tion duly  incorporated  and  organized  under  and  by  virtue  of  the  laws 
of  the  State  of  Missouri  and  a  citizen  of  said  State,  brings  this  its  bill 
of  complaint  against  S.  A.  R.,  resident  of  the  County  of  Douglas,  State 
of  Illinois,  and  a  citizen  of  said  state  of  Illinois,  and  for  cause  there- 
of your  Orator  complains  and  states  that  heretofore  and  prior  to  the 
20th  day  of  December,  1877,  the  said  S.  A.  R.  being  then  engaged  in 
the  business  of  making  and  selling  a  medicine  known  as  "Samaritan 
nervine,"  a  medicine  for  the  relief  of  epileptic  fits  and  all  other  ner- 


768  APPENDIX  J. 

vous  diseases,  adopted  and  used  as  his  trademark  on  such,  medicine 
the  figure  of  a  man  in  an  epileptic  fit  falling  backward,  with  his 
arms  extended  and  his  cane  and  hat  dropping  to  the  ground,  with  the 
word  "trade"  printed  in  small  capitals  on  the  right  of  said  figure  and 
the  word  "mark"  printed  in  small  capitals  on  the  left  side  of  said  fig- 
ure. A  copy  or  specimen  of  which  said  trademark,  adopted  and  used 
by  said  S.  A.  R.  in  his  said  business  and  on  his  said  medicine  herein 
aforesaid,  as  registered  in  the  United  States  Patent  Ofiice  March  26th, 
1878,  is  hereto  attached,  marked  Exhibit  "A,"  for  the  purpose  of  illus- 
trating and  explaining  the  said  trademark,  so  used  and  adopted  by 
the  said  S.  A.  R.  as  aforesaid. 

Your  Orator  further  represents  to  your  Honors  that  after  the  said 
S.  A.  R.  had  used  and  adopted  said  device  as  and  for  his  trademark 
in  his  business  the  "Dr.  S.  A.  Richmond  Medical  Company"  was  in- 
corporated and  organized  under  and  by  virtue  of  the  laws  of  the 
State  of  Missouri  and  succeeded  the  said  S.  A.  R.  in  the  business  of 
manufacturing  and  selling  the  medicine  aforesaid  on  v/hich  said 
trademark  was  used,  and  acquired  all  the  right,  title,  and  interest  in 
and  to  said  trademark  theretofore  owned  and  enjoyed  by  said  S.  A. 
R. 

Your  Orator  further  represents  to  your  honors  that  the  incorpora- 
tion of  the  "Dr.  S.  A.  Richmond  Medical  Company"  about  the  latter 
part  of  the  year  1883  or  early  part  of  the  year  1884,  the  particular  date 
of  which  your  Orator  is  unable  to  state,  said  "Dr.  S.  A.  Richmond 
Medical  Company"  adopted  and  used,  in  connection  with  the  trade- 
mark aforesaid,  an  engraved  portrait  of  Dr.  S.  A.  Richmond,  placed 
on  the  outside  wrapper  in  which  the  bottle  of  medicine  was  encased, 
forming  the  front  side  of  bottle,  and  on  circulars  and  other  mediums 
of  advertising,  and  was  also  blown  in  the  bottles  and  photographed  on 
paper  and  pasted  on  opposite  side  of  the  bottles;  the  words  "new  style" 
printed  in  small  capitals  on  the  upper  right  hand  corner  of  said  out- 
side wrapper,  and  the  word  "adopted"  and  figures  "1884"  printed  in 
same  manner  in  upper  left-hand  corner  of  said  wrapper;  also  the  por- 
trait of  said  Dr.  S.  A.  R.,  surrounded  by  four  globes,  was  placed  on 
outside  wrapper  on  the  back  of  said  bottles. 

A  copy  or  specimen  of  said  portrait  and  globes  as  used,  as  aforesaid, 
by  said  "Dr.  S.  A.  Richmond  Medical  Company"  is  hereto  attached  and 
marked  Exhibit  "B"  for  the  purpose  of  illustration  and  explanation. 

Your  Orator  further  represents  to  your  honors  that  on  or  about  the 
13th  day  of  May,  1884,  the  said  "Dr.  S.  A.  Richmond  Medical  Company" 
made  an  assignment  for  the  benefit  of  its  creditors  under  and  pursuant 
to  the  laws  of  the  State  of  Missouri.  That  said  assignment  was  duly 
made,  prosecuted  and  wound  up  according  to  law.  A  copy  of  the 
resolution  of  said  company  authorizing  the  president  thereof  to  make 
such  assignment  is  hereto  attached,  marked  Exhibit  "C,"  and  made  a 
part  of  this  bill. 

That  by  order  of  the  court  in  said  proceedings  of  assignment,  the 
formula  for  compounding  raid  medicine,  the  good-will  of  the  business. 


FORMS    OP    BILLS    AND    .ANSWERS.  769 

and  the  trademark  and  all  other  designs  used  by  the  said  "Dr.  S.  A. 
Richmond  Medical  Company,"  including  the  portrait,  and  portrait  con- 
nected with  globes  used  by  said  company  as  herein  aforesaid  for  the 
purpose  of  advertising  said  medicine,  was  duly  and  lawfully  sold  by 
the  assignee  of  said  "Dr.  Richmond  Medical  Company,"  and  that 
J.  A.  R.  became  the  purchaser  thereof;  that  afterwards  your  Orator, 
"The  Dr,  S.  A.  Richmond  Nervine  Company,"  was  incorporated  and 
organized  under  and  by  virtue  of  the  laws  of  the  State  of  Missouri,  and 
by  purchase  of  and  transfer  by  said  J.  A.  R.,  succeeded  the  "Dr.  S.  A. 
Richmond  Medical  Company,"  in  the  manufacture  and  sale  of  said  med- 
icine, the  Samaritan  nervine,  and  acquired  all  the  right,  title  and  in- 
terest in  and  to  said  personal  property,  formula,  trademark  and  all 
devices  used  in  connection  therewith,  as  aforesaid,  theretofore  owned, 
adopted,  used  and  enjoyed  by  the  said  "Dr.  S.  A.  Richmond  Medical 
Company,"  and  that  thereby  your  orator  became  and  now  is  the  sole, 
exclusive  and  rightful  owner  of  said  property,  formula,  trademark,  and 
devices  adopted  and  used  in  connection  therewith,  and  is  entitled  to  the 
sole  and  exclusive  use  and  enjoyment  of  the  same,  and  is  now  and  for 
several  years  last  past  has  been  engaged  in  making  and  selling  said 
Samaritan  nervine  and  using  thereon  and  in  connection  therewith  the 
trademark  and  portrait  of  said  Dr.  Richmond  and  said  other  devices  in 
connection  therewith,  as  hereinbefore  mentioned  and  set  out. 

Your  Orator  further  represents  to  your  honors  that  after  your  orator 
had  succeeded  to  all  of  the  rights  of  the  "Dr.  S.  A.  Richmond  Medical 
Company"  and  had  engaged  in  the  business  of  making  the  said  med- 
icine aforesaid  under  said  trademark,  etc.,  and  about  May  1st,  1884,  it 
was  adopted  as  and  for  an  additional  trademark  for  medicine  for  reliev- 
ing epileptic  fits  and  other  nervous  diseases,  said  portrait  of  Dr.  S.  A. 
Richmond  with  the  word  "trade"  printed  in  small  capitals  on  the  left 
side  of  said  portrait,  and  the  word  "mark"  printed  in  small  capitals  on 
the  right  of  said  portrait.  A  copy  or  specimen  of  which  said  trade- 
mark so  used  and  adopted  by  your  orator  as  registered  in  the  United 
States  Patent  Office  March  6th,  1888,  is  hereto  attached,  marked  Exhibit 
"D,"  for  the  purpose  of  illustrating  and  explaining  the  said  trademark 
so  adopted  by  your  orator. 

That  after  your  orator  acquired  the  said  trademark  as  aforesaid  it 
has  been  extensively  engaged  in  manufacturing  and  selling  said  med- 
icine under  said  trademarks  and  said  other  devices  used  in  connection 
therewith;  that  it  has  extensively  advertised  said  medicine  under  said 
trademarks  and  devices  used  in  connection  therewith,  and  has  spent 
large  sums  of  money  in  so  advertising  said  medicine  and  bringing  it 
to  the  knowledge  of  the  public;  that  said  medicine  under  said  trade- 
marks, etc..  has  acquired  an  extensive  and  valuable  reputation  all  over 
the  United  States  and  in  foreign  countries  through  the  efforts  and 
labors  of  your  orator  and  its  large  expenditures  of  money  in  adver- 
tising and  pushing  the  sale  of  said  medicine  under  said  trademarks, 
etc.,  and  that  your  orator  has  acquired  a  valuable  property  interest  in 

49 


770  APPENDIX  J. 

and  to  said  trademarks  that  makes  their  exclusive  enjoyment  in  your 
orator  of  great  pecuniary  value  and  importance. 

Your  orator,  in  further  complaint,  further  represents  to  your  honors 
that  notwithstanding  the  long  use  and  enjoyment  of  said  trademarks 
and  the  portrait,  etc.,  used  in  connection  therewith  as  aforesaid,  which 
your  orator  charges  and  avers  was  used  by  the  "Dr.  S.  A.  Richmond 
Medical  Company"  and  by  the  assignee  thereof  was  sold  to  your  orator 
and  used  by  it  continuously  from  thence  to  the  present  time  with  the 
knowledge  and  consent  of  the  said  Dr.  S.  A.  R.,  and  notwithstanding 
its  rights  to  the  exclusive  use  and  enjoyment  of  said  trademarks,  etc., 
the  said  defendant,  S.  A.  R.,  for  the  purpose  of  defrauding  your  orator, 
well  knowing  the  premises  and  the  rights  and  privileges  secured  to 
your  orator  by  the  use  and  adoption  of  said  trademarks,  and  to  appro- 
priate to  himself  the  profits,  benefits  and  advantages  which  would  have 
accrued  to  it  from  the  exclusive  use  of  said  trademarks,  etc.,  within 
the  district  aforesaid,  has  made  what  he  styles  "Samaritan  nervine," 
and  is  now  wrongfully  engaged  in  making  the  same  in  Tuscola,  county 
of  Douglas  and  State  of  Illinois,  unlawfully,  wrongfully  and  deceitfully 
wrapped  and  packed  such  so-called  "Samaritan  nervine"  similar  to  that 
used  by  your  orator,  and  is  now  wrongfully  making,  and  wrongfully 
and  deceitfully  wrapping  and  packing  said  so-called  "Samaritan  ner- 
vine" in  packages  similar  to  that  used  by  your  orator  and  have  used 
thereon  both  the  trademai'Ks  aforesaid  and  the  devices  connected  there' 
with  as  aforesaid,  in  direct  violation  of  the  exclusive  right  to  use  the 
same  vested  in  your  orator,  and  that  he  has  by  means  of  said  trade- 
marks and  devices  sold  large  quantities  of  so-called  "Samaritan  ner- 
vine" throughout  the  United  States  and  in  said  district  where  your 
orator  is  selling  its  nervine  under  said  trademarks  aforesaid  in  direct 
infringement  of  said  trademarks.  The  fact  that  said  defendant  is  en- 
gaged in  the  manufacture  and  sale  of  said  medicine  and  using  said 
trademarks  and  devices  in  connection  therewith  will  more  fully  appear 
by  defendant's  aflJdavit  filed  in  the  Patent  Ofiice  of  the  United  States, 
a  copy  of  which  is  hereto  attached,  marked  Exhibit  "E,"  and  made  a 
part  of  this  bill. 

Your  orator  further  states  that  what  amount  of  goods  said  defend- 
ant, S.  A.  R.,  has  sold  under  said  trademarks  it  is  unable  to  state  nor 
does  it  know  but  upon  information  and  belief,  but  your  orator  avers  that 
he  has  sold  large  quantities  of  the  same,  using  said  trademarks,  is  now 
making  said  so-called  "Samaritan  nervine"  and  using  said  trademarks 
thereon,  and  have  received  and  are  receiving  for  such  sales  great 
gains  and  profits,  but  to  what  amount  your  orator  is  ignorant  and 
cannot  set  forth,  except  that  it  alleges  that  such  gains  and  profits 
amount  to  more  than  five  thousand  dollars,  exclusive  of  costs,  and  that 
your  orator  has  been  damaged  to  an  amount  exceeding  five  thousand 
dollars,  exclusive  of  costs. 

Your  orator  further  represents  to  your  honors  that  said  S.  A.  R.,  the 
defendant  herein,  well  knowing  the  exclusive  right  of  your  orator  to 
make  and  vend  said  medicine,  "Samaritan  nervine,"  and  the  exclusive 


FORMS    OP    BILLS    AND    ANSWERS.  771 

right  and  privilege  of  your  orator  to  use  said  trademarks  and  devices 
in  the  sale  of  said  medicine  and  in  connection  therewith,  and  in  the 
advertisement  of  the  same,  and  the  great  benefit  secured  to  your  Orator 
by  the  use  and  adoption  of  said  trademarks,  intending  to  injure  your 
said  orator  and  appropriate  to  himself  the  profits,  benefits,  and  advan- 
tages which  would  accrue  to  it  from  the  exclusive  use  of  said  trade- 
marks within  the  district  aforesaid,  has  wrongfully  and  fraudulently 
applied  to  the  Patent  Office  of  the  United  States  of  America  for  regis- 
tration of  said  portrait  of  said  Dr.  S.  A.  R.  adopted  and  long  used  by 
your  orator  as  its  trademark  aforesaid  as  and  for  his  trademark;  all 
of  which  will  fully  appear  by  copy  of  his  statement  and  declaration 
filed  in  the  Patent  Office  of  the  United  States  of  America,  which  is 
hereto  attached,  marked  Exhibit  "F,"  and  made  part  hereof;  that  said 
S.  A.  R.  has  no  interest  in  the  formula  for  compounding  the  medicine 
in  suit  nor  is  he  entitled  to  adopt  or  use  said  portrait  as  his  trade- 
mark. 

Your  orator  further  represents  to  your  honors  that  said  S.  A.  R.  is 
•wholly  insolvent  and  worthless,  and  that  he  would  be  unable  to  pay 
any  damages  that  your  orator  might  sustain  by  means  of  the  premises 
aforesaid;  that  your  said  orator  has  no  speedy  or  adequate  remedy  at 
law  in  the  premises,  and  it  can  only  be  protected  in  its  several  rights 
herein  by  the  equitable  interposition  of  this  court. 

Your  orator  prays  that  the  defendant  may  be  required  to  make  a 
disclosure  of  all  such  sales  and  profits,  and  that  they  may  be  required 
to  account  with  and  pay  over  to  your  orator  all  the  damages  it  may 
have  sustained  and  profits  which  he  has  received  from  such  unlawful 
use  of  said  trademark,  and  that  they  may  be  enjoined  provisionally 
and  preliminarily  pending  a  hearing  herein. 

Wherefore,  the  premises  considered,  your  orator  prays  that  upon  a 
final  hearing  the  defendant  be  enjoined  and  restrained  by  decree  from 
in  any  manner  making  and  selling  said  medicine,  Samaritan  nervine, 
under  the  name  of  Samaritan  nervine  or  under  anj'  ether  name  what- 
ever, and  from  in  any  manner  using  said  trademarks  or  devices 
enumerated  therewith  or  either  of  them  or  any  trademark  or  marks  so 
nearly  resembling  them  as  will  be  calculated  to  deceive  on  any  of  their 
preparations  and  from  infringing  upon  your  orator's  exclusive  right  to 
use  the  same;  that  the  defendant  be  enjoined  and  restrained  from  the 
further  prosecution  of  the  registration  of  said  portrait  as  his  said 
trademark  before  the  Patent  Office  of  the  United  States,  and  that  he 
be  required  to  account  with  and  pay  over  to  your  orator  all  damages 
sustained  by  it  and  profits  by  him  received  from  such  unlawful  use 
of  said  trademarks. 

That  your  orator  may  have  such  other  and  further  relief  in  the 
premises  as  equity  and  good  conscience  will  allow  and  as  to  this 
court  shall  seem  meet;  and  may  it  please  your  honors  to  grant  unto 
your  orator  a  writ  of  subpoena  of  the  United  States  of  America  under 
the  seal  of  this  honorable  court,  directed  to  the  defendant.  S.  A.  R., 
commanding  him  to  appear  in  this  honorable  court,  then  and  there  to 


772  APPENDIX  J. 

answer  all  and  singular  the  premises  and  to  stand  to  and  perform  and 
abide  such  further  orders,  directions,  and  decree  as  may  be  made 
against  him;    and  your  orator  will  ever  pray. 

H.  &  P.  and  B.  &  B.  &  P., 

Solicitors  for  Complainant. 


BILL.  OF  COMPLAINT. 

(Saxlehner  v.  Eisner  &  Mendelson  Co.,  179  U.  S.  19). 

To  the  Honorable  the  Judges  of  the  Circuit  Court  of  the  United  States 
for  the  Southern  District  of  New  York: 
Elmilie  Saxlehner  brings  this  bill  of  complaint  against  Eisner  &  Men- 
delson Company,  and  thereupon  your  Orator  complams  and  says,  upon 
information  and  belief: 

1.  That  your  Orator  is  the  widow  of  Andreas  Saxlehner,  deceased, 
and  resides  at  the  City  of  Budapest,  in  the  Kingdom  of  Hungary,  and  is 
a  subject  of  the  King  of  Hungary. 

2.  That  the  defendant,  the  said  Eisner  &  Mendelson  Company, 
during  the  time  when  the  acts  hereinafter  complained  of  were  com- 
mitted was,  and  now  is,  a  corporation  duly  incorporated  under  the 
laws  of  the  State  of  West  Virginia,  having  an  office  for  the  transaction 
of  its  business  in  the  City  of  New  York,  and  is  a  citizen  of  the  State 
of  West  Virginia. 

3.  That  the  said  Andreas  Saxlehner,  late  of  the  City  of  Budapest, 
in  the  Kingdom  of  Hungary,  was  at  all  the  times  herein  mentioned, 
until  the  24th  day  of  May,  1889,  the  proprietor  of  a  certain  well  situ- 
ated at  Orsod,  within  the  city  limits  of  the  city  of  Buda  (otherwise 
known  in  the  German  language  as  the  city  of  Of  en),  which  city  has 
for  about  twenty-five  years  last  past  been,  and  is  now,  united  with 
the  city  of  Pest,  under  the  name  of  Budapest,  in  said  Kingdom  of 
Hungary,  the  waters  of  which  said  well  possess  valuable  medicinal 
properties. 

4.  That  in  or  about  the  year  1863  said  Andreas  Saxlehner  com- 
menced to  bottle  the  waters  of  said  well  and  to  sell  the  same  in  the 
market,  and  for  the  purpose  of  distinguishing  his  said  bitter  waters 
from  other  bitter  waters  then  known  and  sold  in  the  market,  adopted 
the  arbitrary  and  fanciful  name  or  trademark  of  "Hunyadi  Janos"  for 
his  said  bitter  waters. 

5.  That  by  reason  of  the  great  care  exercised  by  him  in  the  business 
of  obtaining,  caring  for  and  bottling  said  waters  and  selling  the  same 
in  the  market,  and  the  valuable  properties  of  said  water,  said  business 
soon  increased  and  additional  territory  was  thereafter  acquired  by  said 
Andreas  Saxlehner  in  which  new  wells,  all  giving  forth  the  same 
water,  were  opened  by  him,  all  being  situated  near  said  first-men- 
tioned well,  and  in  a  valley  surrounded  by  considerable  hills,  the 
geographical    name   of  which   valley   and   territory  contained   in   it  is 


FORMS    OP    BILLS    AND    ANSWERS.  773 

Orsod,  and  thereupon  said  Andreas  Saxlehner  applied  said  name  of 
"Hunyadi  Jauos"  to  the  bottled  water  of  said  spring  sold  by  hira  in 
the  market. 

6.  That  at  or  about  the  time  when  said  Andreas  Saxlehner  adopted 
said  name  of  "Hunyadi  Janos"  as  aforesaid,  he  also  adopted  a  charac- 
teristic and  novel  style  of  bottles  in  which  said  water  was  sold  by  him 
in  the  market,  the  same  being  of  a  straight  shape  with  a  short  neck  to 
the  top  of  which  was  attached  a  metal  capsule  bearing  the  inscription 
"Hunyadi  Janos  Budai  Keseruviz"  (meaning  Hunyadi  Janos  bitter 
water  of  Buda)  together  with  a  portrait  supposed  to  be.  a  portrait  of 
the  mediaeval  Hungarian  hero  Hunyadi  Janos  stamped  thereon,  and  a 
novel  and  peculiar  label  covering  almost  the  whole  body  of  the  bottle, 
the  characteristic  features  of  which  said  label  were  a  division  of  the 
same  into  three  longitudinal  fields,  the  middle  field  bearing  said  por- 
trait in  a  medallion  with  the  name  "Hunyadi  Janos"  written  in  large 
letters  on  the  top  part  of  said  label,  the  color  of  the  middle  field  being 
red.  That  thence  hitherto  said  natural  mineral  waters  bottled  and  sold 
by  said  Andreas  Saxlehner  in  Hungary  and  other  European  countries 
and  in  all  markets  of  the  world,  have  been  known  and  called  by  said 
name  and  trademark  of  "Hunyadi  Janos"  water.  That  the  said  name 
"Hunyadi  Janos"  is  in  no  way  descriptive  of  the  nature  or  quality  of 
the  water  of  the  said  well  or  wells,  but  was  adopted  by  the  said  pro- 
prietor as  a  fancy  or  ideal  name  and  as  a  trademark  to  distinguish  the 
water  of  his  said  wells  in  commerce  from  all  other  waters. 

7.  That  soon  after  said  business  of  bottling  and  exporting  said  Hun- 
yadi Janos  water  had  been  commenced  by  said  Andreas  Saoclehner  in 
the  year  1863,  said  water,  named,  bottled,  and  labeled  as  aforesaid,  be- 
came popular  and  was  exported  to  and  sold  in  all  the  principal  coun- 
tries of  Europe  and  also  in  the  United  States  of  America.  That  in  the 
countries  inhabited  by  the  Latin  races,  the  word  "Janos"  became  the 
common  appellation  of  said  water,  it  being  known  as  "Eau  de  Janos"  or 
"Aqua  di  Janos,"  while  in  England  and  the  United  States  of  America 
the  name  "Hunyadi"  became  the  common  appellation  thereof,  it  being 
known  as  "Hunyadi  water."  That  in  the  month  of  March,  1876,  said 
Andreas  Saxlehner  executed  a  contract  to  a  corporation  known  as  the 
"Apollinaris  Company,  Limited,"  of  London,  by  which  he  granted  to 
said  company  the  exclusive  right  to  sell  his  said  natural  "Hunyadi 
Janos"  bitter  water  in  Great  Britain,  its  colonies  and  possessions  and 
the  United  States  of  America,  and  other  transmarine  countries  for  the 
term  of  ten  years,  which  contract  was  thereafter  further  extended  and 
terminated  on  the  25th  day  of  March,  1896. 

8.  That  about  the  time  when  said  contract  was  entered  into  a  label 
was  designed  to  be  used  on  the  bottles  of  such  water  which  were  to 
be  sold  through  said  "Apollinaris  Company.  Limited,"  of  substantially 
the  same  contents  and  characteristic  parts  as  the  label  theretofore 
used,  but  of  a  different  color,  the  body  of  the  label  being  of  blue  color, 
while  the  red  color  of  the  central  field  was  substantially  retained. 
That  the  name  "Hunyadi  Janos"  together  with  the  historical  portrait 


774  APPENDIX  J. 

and  the  name  of  "Andreas  Saxlehner"  were  retained  on  same  label  in 
the  same  manner  as  before,  as  was  also  the  division  into  three  longi- 
tudinal fields;  and  the  general  style  of  the  bottles,  as  also  the  capsule 
and  imprint  thereon  above  described  remained  the  same.  That  said 
label  was  substantially  like  the  label  used  by  your  orator,  the  suc- 
cessor of  Andreas  Saxlehner  in  said  business,  as  hereinafter  referred 
to.  That  soon  thereafter  there  was  added  to  said  blue  and  red  label  a 
small  narrow  strip  on  the  top  thereof,  in  the  same  blue  color  contain- 
ing the  printed  words  "Sole  exporters:  The  Apollinaris  Company,  Lim- 
ited, London,"  which  strip  has  been  since  retained,  the  reading  of  the 
print  being  thereafter  changed  to  "Proprietor:  Firm  of  Andreas  Sax- 
lehner,  Budapest,  Hungary." 

9.  That  ever  since  the  adoption  of  said  red  and  blue  label,  as  afore- 
said, in  or  about  the  year  1876,  large  quantities  of  such  bitter  water 
thus  bottled  and  labeled  were  exported  by  the  said  Andreas  Saxlehner 
through  said  Apollinaris  Company,  Limited,  to  the  United  States  of 
America,  and  there  sold  to  the  public,  and  said  water  became  known 
in  the  United  States  of  America  under  the  name  of  "Hunyadi  water," 
and  became  known  under  the  name  as  the  property  of  said  Andreas 
Saxlehner,  and  was  ordered  and  sold  under  such  name,  the  same  being 
an  abbreviation  of  the  name  "Hunyadi  Janos."  That  a  large  traflBc 
and  business  in  exporting  to  the  United  States,  and  vending  therein 
said  water,  was  established  and  continuously  carried  on  and  is  now 
carried  on  by  your  orator  as  successor  in  business  of  said  Andreas 
Saxlehner. 

10.  That  on  May  24,  1889,  said  Andreas  Saxlehner  died,  and  your 
orator,  his  widow,  thereupon  succeeded  him  in  said  business  of  bottling 
and  exporting  said  Hunyadi  Janos  water,  and  became  and  is  the  pro- 
prietor thereof. 

11.  That  since  the  termination  of  said  contract  with  said  Apollinaris 
Company,  Limited,  your  orator  has  continued  said  business  of  ship- 
ping to  the  United  States,  and  selling  therein  said  Hunyadi  Janos 
water,  commonly  known  as  Hunyadi  water,  in  bottles  and  with  labels 
and  capsules  thereon  substantially  as  hereinbefore  last  described,  ex- 
cepting that  upon  said  labels  the  statement  is  contained,  "Proprietor: 
Firm  of  Andreas  Saxlehner,  Budapest,  Hungary,"  in  place  of  an  indi- 
cation of  the  Apollinaris  Company  as  exporters.  That  your  orator  is 
the  sole  proprietor  of  the  firm  of  Andreas  Saxlehner,  and  lawfully 
doing  business  in  Austria-Hungary,  under  said  firm  name. 

12.  That  on  or  about  the  12th  day  of  November,  1886,  said  Andreas 
Saxlehner  duly  made  application  to  the  United  States  Patent  OflSce, 
according  to  the  statute  of  the  United  States  therefore  provided,  for 
registration  of  the  name  "Hunyadi"  as  his  trademark  for  natural 
aperient  waters,  and  such  proceedings  were  thereafter  had,  that  on  or 
about  the  5th  day  of  April,  1887,  a  certificate  of  registration  of  said 
trademark  "Hunyadi"  was  duly  issued  to  him  by  said  United  States 
Patent  Ofllce,  dated  on  said  last-mentioned  day,  and  numbered  14252, 


FORMS    OF    BILLS    AND    ANSWERS.  775 

to  which  certificate,  or  a  certified  copy  thereof,  ready  in  court  to  be 
produced,  your  orator  refers  for  greater  certainty. 

13.  That  by  reason  of  said  sales  by  your  orator  and  her  predeces- 
sors in  business,  and  his  and  your  orator's  agents  as  aforesaid,  the 
said  word  "Hunyadi"  on  said  label  by  her  used  and  her  predecessor  as 
aforesaid,  dealers  in  mineral  water,  and  the  purchasers  and  consumers 
of  said  water  generally  have  come  to  know  and  have  long  known  your 
orator's  mineral  water  under  the  names  and  trademarks,  "Hunyadi" 
or  "Hunyadi  Janos,"  and  under  the  said  label,  and  in  the  style  of 
bottles,  capsules  and  labels  as  before  described,  and  that  the  water 
so  furnished  and  sold  by  your  orator  in  the  United  Slates  is  procured 
directly  from  the  well  or  wells  aforesaid,  and,  therefore,  to  rely  upon 
the  said  label  and  trademark  as  an  assurance  and  guarantee  of  the 
genuineness,  strength  and  purity  of  the  said  water,  and  your  orator 
alleges  that  said  assurance  and  guarantee  was  and  is  of  great  value  to 
your  orator  and  to  the  dealers  and  consumers  of  said  water.  And  that 
said  water  so  sold  by  your  orator  has  come  generallj  to  be  known  and 
designated  by  the  trade  so  called,  and  by  purchasers  and  consumers 
of  the  water  in  the  United  States  of  America  by  the  first  and  charac- 
teristic word  of  said  trademark,  "Hunyadi,"  the  "Janos"  being  com- 
paratively seldom  used   in  common  parlance  in  this  country. 

14.  And  your  orator  further  shows  unto  your  honors  that  the  de- 
fendant above  named,  well  knowing  the  premises  and  the  rights  exist- 
ing in  and  secured  to  your  orator  as  aforesaid,  but  contriving  to  injure 
your  orator  and  deprive  her  of  the  benefits  and  advantages  which 
might  and  otherwise  would  accrue  unto  her  from  the  enjoyment  of 
such  rights  and  to  injure  and  impose  upon  the  public,  subsequent  to  the 
adoption  of  the  said  trademark,  label,  bottle  and  capsules  by  your 
orator  and  her  predecessor,  recently  and  before  the  commencement  of 
the  suit,  as  your  orator  is  informed  and  believes,  in  the  City  of  New 
York  and  elsewhere,  without  license  or  allowance  and  against  the  will 
of  your  orator,  in  violation  of  the  rights  of  your  orator  and  infringing 
the  said  trademark,  did  unlawfully  and  wrongfully  import  for  sale  and 
sell  and  offer  for  sale  bitter  water  not  coming  from  your  orator's  said 
wells  in  bottles  of  identical  shape  and  size  as  those  used  by  your  orator 
and  with  certain  capsules  thereon  stamped  with  a  portrait  in  imitation 
of  that  impressed  on  your  orator's  capsules,  surrounded  by  a  circular  in- 
scription and  the  initials  H.  L.  and  with  labels  on  said  bottles  bearing 
the  name  "Hunyadi  Laszlo,"  Budai  Keseriiviz,  and  a  portrait  in  the 
middle  field  of  said  label,  set  in  a  medallion,  all  in  close  and  fraudu- 
lent simulation  of  your  orator's  trademark;  and  that  defendant's  said 
labels  also  further  imitate  your  orator's  labels  by  being  divided  in 
three  longitudinal  fields,  covering  almost  the  whole  body  of  the  bottle, 
the  color  of  the  middle  field  being  red,  and  that  of  the  body  of  the 
label  being  blue,  and  in  many  other  particulars,  all  contrived  to  induce 
the  public  to  take  defendant's  said  water  as  and  in  place  of  your 
orator's  water. 

And  that  other  bottles  of  such  water,  sold  by  said  defendant,  imitate 


776  APPENDIX  J. 

your  orator's  bottles  in  shape,  size  and  color,  capsule  and  label,  being 
marked  with  the  name  "Hunyadi  Matyas,"  and  bearing  a  label  de- 
signed in  close  and  fraudulent  simulation  of  your  orator's  said  label 
in  color,  division  into  three  panels  and  printed  matter  contained 
thereon,  including  a  medallion  portrait  in  the  central  panel  and 
repeated  on  the  capsule. 

15.  And  your  orator  further  shows  that  the  similarity  between  the 
said  bottles,  capsules,  labels  and  names  used  respectively  by  your 
orator  and  the  defendant  is  so  great  that  the  public  and  consumers 
and  purchasers  are  likely  to  be  deceived  thereby,  and  are  in  fact 
deceived  to  suppose  the  water  so  sold  by  the  said  defendant  to  be  that 
sold  by  your  orator  and  thereby  to  cause  your  orator  great  loss  and 
damage. 

16.  That  until  the  year  1890  your  orator  and  her  said  predecessor 
in  business  did  not  enjoy  adequate  protection  in  Hungary  in  the  use 
of  her  and  his  trademarks,  tradenames  and  labels  on  account  of  the 
lack  of  statutes  regulating  such  matter,  by  reason  of  which  fact  other 
persons  used  the  name  Hunyadi  in  connection  with  other  names  as 
trademarks  for  other  bitter  waters,  and  closely  imitated  your  orator's 
labels,  capsules  and  bottles,  and  your  orator's  predecessor  was  unable 
to  stop  such  fraudulent  practices.  That  since  1890,  the  law  of  Hungary 
has  been  changed,  and  your  orator  has  succeeded  in  causing  all  these 
fraudulent  marks  and  labels  to  be  suppressed  by  proper  proceedings 
brought  for  this  purpose,  including  also  the  use  of  the  name  "Hunyadi 
Laszlo"  and  "Hunyadi  Matyas,"  and  the  labels  upon  which  said  names 
were  used  by  the  proprietors  of  the  springs  from  which  said  defend- 
ant's waters  came,  and  that  the  further  use  of  said  names  is  now  a 
criminal  offense  in  Hungary. 

That  your  orator  has  duly  notified  said  defendant  of  her  rights  and 
claims  in  the  premises  and  requested  it  to  desist  from  such  further 
sales,  but  said  defendant  has  refused  and  still  refuses  so  to  do. 

19.  That  the  value  of  the  matter  in  dispute  between  your  orator 
and  the  defendant,  exclusive  of  interest  and  costs,  exceeds  the  sum 
of  two  thousand  dollars. 

20.  That  by  reason  of  the  said  acts  done  or  threatened  and  intended 
to  be  done  by  said  defendant,  all  in  defiance  of  the  rights  of  your 
orator,  as  aforesaid,  great  and  irreparable  loss  and  injury  has  been, 
is  and  will  be  caused  to  your  orator,  and  she  has  been  and  is  and 
will  be  deprived  of  great  gains,  profits  and  advantages  which  might 
and  otherwise  would  be  obtained  and  enjoyed;  and  your  orator  is 
informed  and  believes  that  the  said  defendant  by  reason  of  the  said 
sales  of  the  said  water  under  the  names  of  Hunyadi  Laszlo,  and 
Hunyadi  Matyas,  and  the  said  labels,  capsules  and  bottles,  has  made 
and  realized  large  profits  and  advantages,  and  now  has  in  its  possession 
or  under  its  control,  or  subject  to  its  order  a  large  quantity  of  said 
waters  so  bottled,  capsuled  and  labeled  which  it  proposes  to  sell,  but 
to  what  extent  said  sales  have  been  made  and  how  large  profits  have 
been  derived  therefrom,  your  orator  does  not  know  and  prays  a  dis- 


FORMS    OF    BILLS    AND    ANSWERS.  777 

covery  thereof.  And  your  orator  further  says  that  such  sales  made 
by  the  said  defendant,  and  the  threats  and  intention  of  defendant  to 
make  such  further  sales  and  said  unlawful  acts  in  disregard  and 
defiance  of  the  rights  of  your  orator  have  the  effect  to  and  do  encour- 
age and  induce  others  to  interfere  with  the  said  trademark  and  label, 
and  to  violate  and  disregard  your  orator's  rights. 

And,  forasmuch  as  your  orator  can  have  no  adequate  relief  except 
in  this  court,  to  the  end,  therefore,  that  the  said  defendant  may,  if  it 
can,  show  why  your  orator  should  not  have  the  relief  hereby  prayed 
and  may,  according  to  the  best  and  utmost  knowledge,  remembrance, 
information  and  belief  of  its  officers,  full,  true,  direct  and  perfect 
answers  make  to  the  premises  and  to  all  the  several  matters  herein- 
before stated  and  charged  as  fully  and  particularly  as  if  severally 
and  separately  interrogated  as  to  each  and  every  of  such  matters, 
and  may  be  compelled  to  account  for  and  pay  to  your  orator  the 
profits  by  it  acquired  and  the  damages  suffered  by  your  orator  from 
the  aforesaid  unlawful  acts.  But  an  aswer  under  oath  is  hereby 
expressly  waived. 

Your  orator  prays  that  the  said  defendant,  its  oflacers,  servants, 
agents,  attorneys  and  workmen,  and  each  and  every  of  them,  may 
be  restrained  and  enjoined  provisionally  and  permanently  by  the  order 
and  injunction  of  this  honorable  court  from  procuring,  parting  with, 
selling  or  attempting  to  sell  within  the  United  States  of  America  any 
water  or  liquid  not  coming  from  the  said  wells  of  your  orator  under 
the  name  or  designation  of  Hunyadi  Laszlo  or  Hunyadi  Matyas  or 
any  name  or  designation  in  which  the  word  "Hunyadi"  occurs,  and 
also  from  procuring,  parting  with,  selling  or  attempting  to  sell  within 
the  said  limits  any  such  water  in  any  bottle  or  vessel  imitating  or 
resembling  in  form,  color  and  general  appearance  those  used  as  afore- 
said by  your  orator  and  her  predecessor  in  business,  or  bearing  upon 
it  any  capsule  stamped  in  any  manner  imitating  or  resembling  the 
said  capsules  of  your  orator,  or  any  label  in  form,  color,  design  and 
general  appearance  imitating  or  resembling  the  said  label  of  your 
orator  on  the  said  bottles  of  Hunyadi  Janos  water,  and  also  from 
procuring,  parting  with  or  selling  or  attempting  to  sell  within  said 
limits  any  such  water  put  up  or  contained  in  bottles  resembling  and 
bearing  capsules,  marks  and  labels  resembling  those  of  your  orator 
-or  bearing  the  name  "Hunyadi." 

And  your  orator  also  prays  that  defendant  may  be  decreed  to  deliver 
up  unto  your  orator  or  to  this  honorable  court  any  and  all  labels  in 
its  possession  upon  which  the  words  "Hunyadi"  or  Hunyadi  Laszlo 
and  Hunyadi  Matyas  appear,  or  which  are  madG  in  imitation  of  or 
resembling  those  adopted  and  used  by  your  orator,  and  any  and  all 
bottles,  whether  filled  or  unfilled,  and  all  capsules  which  imitate  or 
resemble  the  bottles  and  capsules  used  by  your  orator  for  said 
"Hunyadi  Janos"  water,  and  to  pay  unto  your  orator  all  profits  derived 
by  the  said  defendant  from  the  sale  of  any  water  under  the  said  name 
Hunyadi  Laszlo  or  Hunyadi  Matyas,  or  any  name  or  designation  In 


778  APPENDIX  J. 

which  the  word  "Hunyadi"  appears,  or  any  vessel  upon  which  was 
or  is  affixed  the  label  or  capsules  resembling  those  adopted  and  used 
as  aforesaid  by  your  orator,  as  well  as  the  costs  of  this  suit;  and  that 
your  orator  may  have  such  further  relief  or  such  other  or  different 
relief  as  to  this  honorable  court  shall  seem  meet  and  as  shall  be 
agreeable  to  equity. 

May  it  please  your  honors  to  grant  unto  your  orator  the  writ  of 
injunction,  as  well  provisional  as  permanent,  issuing  out  of  and 
under  the  seal  of  this  honorable  court,  commanding,  enjoining  and 
restraining  the  said  defendant,  its  officers,  servants,  agents,  attorneys 
and  workmen,  and  each  and  every  of  them  as  is  hereinbefore  and  in 
that  behalf  prayed. 

May  it  please  your  honors  to  grant  unto  your  orator  the  writ  of 
subpoena  issuing  out  of  and  under  the  seal  of  this  honorable  court 
directed  to  the  said  defendant,  Eisner  &  Mendelson  Company,  by  a 
certain  day  and  under  a  certain  penalty  to  be  and  appear  in  this 
honorable  court,  there  and  then  to  answer  the  premises  and  to  stand 
to  and  abide  such  order  and  decree  as  may  be  made  against  it. 

And  your  orator  will  ever  pray,  &c. 

B.  &  K., 
Complainant's  Solicitors. 


BILL  OF  COMPLAINT. 

(Hennessy  v.  Herrmann,  89  Fed.  Rep.  669.) 

In  the  Circuit   Court   of  the  United   States  for  the   Northern  Judicial 
District  of  the  State  of  California. 

Jacques  Richard  Maurice  Hennessy,' 
Jacques  Francis  Henry  Hennessy, 
James  Richard  Charles  Hennessy, 
Armand  Castillon  and  Emmanuel  )■  In    Equity. 
Castaigne, 

against 
J.   H.   and   C.   S. 

To  the  Honorable  Judges  of  the  Circuit  Court  of  the  United  States 
for  the  Northern  Judicial  District  of  California: 

First.  J.  R.  M.  H.,  J.  F.  H.  H.,  J.  R.  C.  H.,  A.  C.  and  E.  C,  all 
of  Cognac  in  France,  and  citizens  of  the  Republic  of  France,  bring 
this  their  bill  of  complaint  against  J.  H.  and  C.  S.,  of  the  city  and 
county  of  San  Francisco,  state  of  California,  residents  of  the  North- 
ern Judicial  District  aforesaid,  and  citizens  thereof,  and  thereupon 
your  orators  complain  and  say: 

Second.  Complainants  state  that  at  all  the  times  hereinafter  men- 
tioned they  were  copartners  under  the  firm  name  and  style  of  James 


FORMS    OF    BILLS    AND    ^VNSWERS.  779 

Hennessy  and  Company.  That  the  complainants  are,  and  for  a  long 
time  previous  to  the  commission  of  the  grievances  hereinafter  men- 
tioned have  been,  exporters,  bottlers  and  vendors  of  a  cordial  or 
liquor  known  as  Hennessy  brandy,  which  the  complainants  and  their 
predecessors  in  the  partnership  business  have  for  upwards  of  thirty 
years  last  past  produced,  bottled  and  sold. 

Third.  That  said  brandy  when  bottled  by  these  complainants  is 
put  up  in  peculiar  tall,  dark  colored  bottles,  to  wit,  twelve  inches  in 
height,  bearing  (a)  a  rectangular  label  bearing  the  inscription,  "Jas. 
Hennessy  &  Co.,  Cognac,"  in  gold  letters  on  a  white  ground,  encircled 
by  a  wreath  of  vine  leaves  and  grapes,  in  gold,  said  w'reath  being 
surmounted  by  an  arm  bearing  a  battle  axe,  also  in  gold;  (b)  a  small 
oblong  label  of  white  with  gold  border  lines,  bearing  the  word  "France" 
in  gold;  (c)  a  crescent-shaped  label;  (d)  a  cork  branded  with  the 
words  "James  Hennessy  &  Co.";  (e)  a  metal  capsule;  all  with  their 
own  proper  devices  and  trademarks  adopted  by  the  complainants 
for  that  purpose  the  year  A.  D.  1870,  and  all  encased  in  square  wooden 
boxes  holding  twelve  bottles  each. 

Fourth.  That  complainants'  trademarks  have  been  duly  registered 
under  the  provisions  of  the  statute  of  the  United  States  in  the  year 
A.  D.  1881.  That  by  reason  of  the  long  experience  and  great  care 
of  the  complainants  in  their  said  business,  and  the  good  quality  of 
said  brandy,  distinguished  as  it  was  by  its  trademarks,  tradenames, 
labels,  corks,  capsules,  and  the  shape,  size  and  color  of  its  bottles, 
the  same  has  become  widely  known  in  the  community  and  throughout 
the  world  as  a  useful  and  valuable  cordial  and  acquired  a  high  repu- 
tation as  such,  and  has  commanded  and  still  commands  an  extensive 
sale  throughout  the  United  States  and  Europe,  which  is  and  has  been 
a  source  of  great  profit  to  these  complainants.  That  your  orators' 
tradename  and  trademarks  are  of  a  value  of  two  thousand  dollars 
and  upwards.  That  said  brandy  when  bottled  by  complainants  is 
known  as  such  brandy  to  the  public,  buyers  and  consumers  thereof 
by  the  said  name  of  James  Hennessy  &  Company's  brandy,  or  Hen- 
nessy brandy,  or  Hennessy  cognac,  together  with  the  complainants' 
own  proper  devices,  tradenames,  and  trademarks  aforesaid,  and  by  its 
straw  wrappers  or  casings  accompanying  and  enclosing  said  bottles, 
and  by  the  peculiar  shape  and  color  of  the  bottles  themselves. 

Fifth.  Complainants  state  that  notwithstanding  the  long  and  quiet 
use  and  enjoyment  by  the  complainants  of  said  tradename  and  trade- 
mark and  to  the  form,  device  and  descriptive  matter  of  said  labels, 
the  defendants,  well  knowing  the  premises  and  with  the  preconceived 
intention  to  injure  the  complainants,  and  with  the  purpose  to  defraud 
them,  and  with  the  purpose  to  deprive  these  complainants  of  the 
benefits  and  profits  resulting  from  the  great  reputation  acquired  for 
said  brandy,  and  the  consequent  demand  therefor,  and  with  the  intent 
to  acquire  for  themselves  the  benefits  and  profits  of  said  reputation, 
and  with  the  intent  to  assist  others  to  palm  off  on  the  public  brandy 
not  being  exported,  sold  or  bottled  by  complainants,  as  the  goods  of 


780  APPENDIX  J. 

the  complainants,  and  in  wilful  disregard  of  complainants'  rights  in 
the  premises,  kept,  offered  for  sale  and  sold,  and  advertised  for  sale, 
and  now  keep,  offer  for  sale  and  sell  in  the  city  and  county  of  San 
Francisco  and  state  of  California,  and  elsewhere  in  the  United  States 
of  America,  counterfeit  labels  in  imitation  of  complainants'  labels 
under  the  name  of  "Hennessy  &  Co.,"  using  fac-similes  of  complain- 
ants' tradename,  devices  and  labels,  which  with  intent  to  deceive 
and  defraud  the  public  and  the  buyers  and  consumers  thereof  they 
have  caused  to  be  sold  to  dealers  engaged  in  counterfeiting  the  bottled 
brandy  of  your  orators;  that  defendants  sold  said  labels  for  the  pur- 
pose and  with  the  intent  that  they  should  so  be  used,  and  that  in 
fact  they  have  been  so  used,  in  fraud  of  your  orators'  rights. 

Sixth.  That  such  imitation  labels  are  calculated  to  deceive  the  pur- 
chasers and  consumers  of  said  brandy,  and  are  calculated  to  cause 
the  public  and  the  buyers  and  consumers  thereof  to  believe  that  the 
brandy  kept  and  offered  for  sale  and  sold  by  defendants'  customers 
is  the  brandy  exported,  bottled  and  sold  by  the  complainants. 

Seventh.  That  such  imitation  is  calculated  to  deceive  and  mislead 
the  purchasers  and  consumers  of  the  complainants'  brandy,  and  has 
actually  deceived  and  misled  and  still  does  mislead  many  of  them  to 
buy  the  brandy  or  liquor  sold  by  the  defendants'  customers  in  the 
belief  that  it  is  the  brandy  exported  and  bottled  by  the  complainants, 
to  the  great  loss,  injury  and  damage  of  the  complainants.  That  the 
article  so  put  up  and  sold  by  the  defendants'  customers  is  of  greatly 
inferior  quality  to  that  of  the  complainants,  and  deleterious  to  the 
health  of  the  consumer,  and  the  general  esteem  and  reputation  of  the 
brandy  exported  by  the  complainants  has  been  and  is  now  being 
injured  and  damaged  thereby. 

Eighth.  Forasmuch  as  your  orators  can  have  no  adequate  relief 
except  in  this  court,  and  to  the  end,  therefore,  that  the  defendants 
may,  if  they  can,  show  why  your  orators  should  not  have  the  relief 
hereby  prayed,  and  may  make  a  full  disclosure  and  discovery  of  all 
the  matters  aforesaid,  and  according  to  the  best  and  utmost  of  their 
knowledge,  remembrance,  information  and  belief,  full,  true,  direct  and 
perfect  answer  make  to  the  matters  hereinbefore  stated  and  charged, 
but  not  under  oath,  an  answer  under  oath  being  expressly  waived. 

And  that  the  defendants  may  be  decreed  to  account  for  and  pay  over 
adequate  damages  arising  from  their  aforesaid  acts  in  violation  of 
your  orators'  rights,  your  orators  pray  that  your  honors  may  grant  a 
writ  of  injunction  issuing  out  of  and  under  the  seal  of  this  honor- 
able court,  perpetually  enjoining  and  restraining  the  said  defendants, 
their  clerks,  attorneys,  agents  and  servants  from  keeping,  offering 
for  sale,  or  selling  any  brandy  not  being  the  brandy  exported  and 
bottled  by  your  orators,  put  up  in  bottles  of  the  general  form,  shape 
and  color  of  complainants'  bottles,  and  wrapped  with  labels  of  the 
form,  device  and  in  the  manner  complained  of,  or  in  any  other  form 
and  device  which  shall  be  a  colorable  imitation  of  complainants' 
brandy,   or  from   applying  to  any  such   brandy  the  name   "Hennessy 


FORMS    OF    BILLS    AND    ANSWERS.  781 

Brandy,"  or  from  using  upon  or  in  connection  with  said  brandy  or 
any  counterfeit  of  your  orators'  labels  or  cases  the  name  "Hennessy," 
or  any  combination  of  such  name  or  name  of  like  sound,  and  that  the 
defendants  deliver  up  to  your  orators  all  bottles  having  thereon  said 
false  label,  and  also  all  such  false  labels  in  their  possession  or  under 
their  control,  to  the  end  and  purpose  that  the  same  may  be  destroyed. 

And  that  your  honors  upon  the  rendering  of  the  decree  above  prayed 
may  assess,  or  cause  to  be  assessed,  the  damages  your  orators  have 
sustained  by  reason  of  the  premises. 

May  it  please  your  honors  to  grant  unto  your  orators  not  only  a 
writ  of  injunction  conformable  to  the  prayer  of  this  bill,  but  also  a 
writ  of  subpoena  of  the  United  States  of  America,  directed  to  the  said 
J.  H.  and  C.  S.,  commanding  them  on  a  day  certain  to  appear  and 
answer  unto  this  bill  of  complaint,  and  to  abide  and  perform  such 
order  and  decree  in  the  premises  as  to  the  court  shall  seem  proper 
and  required  by  the  principles  of  equity  and  good  conscience. 

J.  L.  H.,  of  Counsel.  A.  L.  P.  and  J.  L.  H., 

Solicitors  for  Complainants. 

United    States    of    America, 
Northern  Judicial  District  of  California, 

J.  L.  H.,  on  behalf  of  the  said  complainants,  Jacques  Richard 
Maurice  Hennessy,  Jacques  Francis  Henry  Hennessy,  James  Richard 
Charles  Hennessy,  Armand  Castillon  and  Emmanuel  Castaigne,  and 
duly  authorized  to  act  for  them  herein,  being  on  his  oath  sworn, 
deposeth  and  says  that  he  has  read  the  above  bill  of  complaint,  and 
that  the  matters  therein  set  forth  are  true  to  his  best  knowledge, 
information  and  belief. 

Subscribed  and  sworn  to  before  me,  this  19th  day  of  July,  1898. 

S.  H., 
Clerk  U.  S.  Cir.  Ct,  N.  D.  C. 

ANSWER. 

(Benkert  v.  Feder,  34  Fed.  Rep.  534.) 

In  the  Circuit  Court  of  the  United  States  in  and  for  the  Ninth  Circuit 
and  District  of  California. 


"Wnj-iAM  J.  Benkekt,   Complainant, 

vs. 

Morris   Rosenthal    and    Samuel  F^der, 

Defendants. 


No.    3507. 


The  answer  of  M.  R.  and  S.  F.  to  the  bill  of  complaint  of  W.  J.  B,, 
complainant. 

These  defendants,  saving  and  reserving  to  themselves  all  right  of 
exception  to  said  bill  of  complaint  on  account  of  the  many  errors 
therein  contained,  for  answer  thereto  or  to  so  much  and  such  parts 
thereof  as  they  are  advised  by  counsel  it  is  necessary  or  important 
for  them  to  make  answer  unto,  answering,  say: 


782  APPENDIX  J. 

That  they  have  no  knowledge  or  information  other  than  from  said 
bill  of  complaint  as  to  the  partnership  or  business  of  the  complain- 
ant and  Casper  Benkert,  or  the  continuance  thereof,  and  cannot  admit 
or  deny  the  allegations  of  said  bill  relative  thereto,  and  insist  that 
complainant  make  proof  thereof. 

Defendants  say  that  they  have  no  knowledge  or  information  other 
than  from  said  bill  of  complaint  as  to  the  sale  by  Casper  Benkert  to 
complainant  of  his  interest  in  said  alleged  business  and  the  carrying 
or.  and  ownership  and  proprietorship  thereof,  and  cannot  admit  or 
deny  the  allegations  of  said  bill  relative  thereto,  and  insist  that  com- 
plainant make  proof  thereof. 

Defendants  say  that  they  have  no  knowledge  or  information  other 
than  from  said  bill  of  complaint  as  to  the  business  of  the  partnership 
of  C.  Benkert  &  Son  and  of  complainant,  or  of  the  boots  and  shoes 
manufactured  and  sold  by  them  or  either  of  them,  or  of  the  quality, 
quantity  and  price  of  such  boots  and  shoes,  or  the  mark  or  other 
designation  thereof  or  thereon,  and  cannot  admit  or  deny  the  allega- 
tions of  said  bill  relative  thereto,  and  insist  that  complainant  make 
proof  thereof. 

Defendants  say  that  they  have  no  knowledge  or  information  other 
than  from  said  bill  of  complaint  as  to  the  placing  as  a  trademark 
upon  said  boots  and  shoes,  and  to  indicate  the  ownership  and  origin 
thereof,  the  words  "C.  Benkert  &  Son,"  and  to  the  knowing  of  said 
boots  and  shoes  by  the  name  of  "C.  Benkert  &  Son,"  and  cannot 
admit  or  deny  the  allegations  of  said  bill  relative  thereto,  and  insist 
that  complainant  make  proof  thereof. 

Defendants  say  that  they  have  no  knowledge  or  information  other 
than  from  said  bill  of  complaint  as  to  the  name  of  "C.  Benkert  &  Son" 
being  a  trademark,  or  the  ownership  of  said  name,  or  the  right  to  use 
and  place  the  same  upon  boots  or  shoes,  and  cannot  admit  or  deny  the 
allegations  of  said  bill  relative  thereto,  and  insist  that  complainant 
make  proof  thereof. 

These  defendants  and  each  of  them  deny  that  they  have  for  more 
than  five  years  last  past  been  partners  in  trade  as  set  forth  in  said 
bill  of  complaint,  except  as  follows:  for  the  four  years  previous  to  the 
month  of  March,  1884,  they,  with  one  Bromberger,  were  partners  in 
trade  under  the  firm  name  of  Rosenthal,  Feder  &  Co.,  and  in  said 
month  said  Bromberger  retired  from  the  copartnership  formed  by 
them;  since  said  month  these  defendants  have  been  partners  in  trade 
as  sot  forth  in  said  bill  of  complaint. 

These  defendants  and  each  of  them  deny  that  within  five  years  or 
at  any  time  or  times  whatsoever  they  or  either  of  them  had  manufac- 
tured or  sold,  or  are  now  manufacturing  or  selling,  large  or  any 
quantities  of  boots  and  shoes  or  boots  or  shoes,  or  each  or  either,  on 
any  of  which  they  have  placed  in  plain  or  conspicuous  letters,  or  at 
all,  the  name  of  "C.  F.  Benkert  &  Son,"  in  imitation  of  the  name  of 
"C.  Benkert  &  Son,"  as  alleged  in  said  bill  of  complaint,  or  at  all. 

Defendants  and  each  of  them  deny  that  they  or  either  of  them  have 


FORMS    OF    BILLS    AND    ANSWERS.  783 

stamped  in  sole-leather  or  buttons  or  any  other  part  of  said  boots  and 
shoes,  or  any  boots  or  shoes  whatsoever,  in  plain  conspicuous  letters 
or  otherwise,  the  name  or  words  "C.  F.  Benkert  &  Son,  Phila." 

Defendants  deny  that  they  have  manufactured  or  are  still  manufac- 
turing said  boots  and  shoes  or  any  boots  or  shoes  marked  with  the 
name  of  "C.  F.  Benkert  &  Son"  in  San  Francisco,  Hawaiian  Islands, 
other  domestic  or  foreign  markets  or  elsewhere,  and  admit  and  show 
to  this  court  that  they  have  sold  in  San  Francisco  and  elsewhere  a 
small  quantity  of  boots  and  shoes  marked  "C.  F.  Benkert  &  Son," 
comprising  not  more  than  two  hundred  and  fifty  dozen  pairs  thereof; 
and  further  state  and  show  that  the  boots  and  shoes  so  sold  were  of 
an  entirely  different  class,  style,  nature  and  grade  from  the  boots  and 
shoes  alleged  in  said  bill  of  complaint  to  be  manufactured  by  the  com- 
plainant and  as  such  were  recognized  by  and  sold  to  the  customers 
and  patrons  of  these  defendants. 

Defendants  say  they  have  no  knowledge  or  information  other  than 
from  said  bill  of  complaint  as  to  the  relative  quality,  cost  of  manu- 
facture and  prices  of  sale  of  said  boots  and  shoes  and  the  boots  and 
shoes  made  by  the  complainant,  and  cannot  admit  or  deny  the  allega- 
tions of  said  bill  relative  thereto,  and  insist  that  complainant  make 
proof  thereof. 

Defendants  and  each  of  them  deny  that  they  have  had  manufac- 
tured for  them  as  set  forth  in  said  bill  of  complaint  large  or  any 
quantities  of  boots  or  shoes  or  any  boots  or  shoes  whatever  on  which 
was  printed  the  name  "C.  F.  Benkert  &  Son"  or  stamped  "C.  F. 
Benkert  &  Son,  Phila.,"  as  set  forth  in  said  bill  of  complaint,  excepting 
not  more  than  three  hundred  and  twenty-one  dozens  thereof,  and  the 
defendants  and  each  of  them  deny  that  they  have  sold  or  are  still 
selling  boots  and  shoes  with  said  words  printed  or  stamped  thereon  in 
San  Francisco  or  elsewhere,  excepting  that  they  have  heretofore  sold 
not  more  than  the  two  hundred  and  fifty  dozens  thereof  aforesaid. 

The  defendants  and  each  of  them  deny  that  they  have  placed  or 
caused  to  be  placed  on  said  boots  or  shoes  alleged  to  have  been  sold  by 
them  or  upon  any  other  boots  or  shoes  whatsoever  said  words,  to  wit, 
"C.  F.  Benkert  &  Son,"  for  the  purpose  of  deceiving  the  public  or 
purchasers  generally,  or  any  other  person,  or  causing  them  or  any 
of  them  to  believe  the  said  boots  or  shoes  were  manufactured  by  the 
complainant  or  at  all.  They  deny  that  the  public  or  purchasers  gen- 
erally or  any  of  them  have  been  deceived  or  have  believed  on  account 
of  said  names  being  on  said  boots  or  shoes  that  the  same  were  genuine 
or  other  boots  or  shoes  manufactured  by  the  complainant,  and  that 
being  deceived  as  alleged  in  said  bill  of  complaint,  or  being  deceived 
at  all,  have  purchased  or  are  now  purchasing,  or  these  defendants 
have  sold  or  are  now  selling,  said  boots  or  shoes  as  or  for  genuine  or 
other  boots  or  shoes  manufactured  by  the  complainant  They  deny 
that  by  any  of  the  acts  and  doings  set  forth  in  said  bill  of  complaint 
they  or  either  of  theru  have  unlawfully  or  otherwise  greatly  or  at  all 
injured  or  depreciated  the  complainants'  trade  in  fine  or  other  boots 


784  APPENDIX  J. 

or  shoes,  or  the  good  or  other  reputation  or  standing  of  said  boots  or 
shoes,  alleged  in  said  bill  of  complaint  to  have  been  had  by  them. 

Defendants  and  each  of  them  deny  that,  unless  restrained  by  injunc- 
tion, they  by  using  said  name  on  the  boots  and  shoes  sold  by  them 
will  infringe  on  the  alleged  name  and  trademark  of  the  complainant 
and  deny  that  they  have  already  at  any  time  been  doing  the  same. 

The  defendants  state  and  show  that  they  have  sold  not  more  than 
two  hundred  and  fifty  dozens  of  boots  and  shoes  marked  "C.  F.  Benk- 
ert  &  Son,"  and  have  realized  therefrom  a  profit  of  about  and  not 
more  than  five  hundred  (500)  dollars. 

The  defendants  and  each  of  them  deny  that  by  reason  of  the  said 
alleged  infringement,  or  of  any  other  act  or  doing  of  these  defendants 
or  either  of  them,  the  complainant  has  suffered  loss  or  damage  to 
a  very  large  or  other  amount  or  any  loss  or  damage  whatsoever. 

Without  this  that  there  is  any  other  matter,  cause  or  thing  in  the 
said  bill  of  complaint  contained  material  or  necessary  for  these  defend- 
ants or  either  of  them  to  make  answer  unto  and  not  herein  and  hereby 
well  and  sufliciently  answered,  confessed,  traversed  and  avoided  is 
true  to  the  knowledge  or  belief  of  these  defendants;  all  of  which 
matters  and  things  these  defendants  are  ready  and  willing  to  aver, 
maintain  and  prove  as  this  honorable  court  shall  direct,  and  humbly 
pray  to  be  hence  dismissed  with  their  reasonable  costs  and  charges 
in  this  behalf  most  wrongfully  sustained. 

M.,  B.  &  M., 
I.  S.  B.,  Solicitors  for  Defendants. 

Of  Counsel  for  Defendants. 


ANSWER. 
(Brown  Chemical  Co.  v.  Meyer,  139  U.  S.  540.) 

THE  JOINT  ANSWER  OF  CHRISTIAN  F.   G.  MEYER,  et  al.  to  the 
Bill  of  Complaint  of  the  BROWN  CHEMICAL  COMPANY. 

These  defendants  now  and  at  all  times  hereafter  saving  and  reserv- 
ing unto  themselves  all  benefit  and  advantage  of  exception  which  can 
or  may  be  had  or  taken  to  the  many  errors,  uncertainties  and  other 
Imperfections  in  the  said  bill  contained  for  answer  thereto  or  to  so 
much  and  parts  thereof  as  these  defendants  are  advised  it  is  material 
or  necessary  for  them  to  make  answer  unto,  say,  etc. 

These  defendants  have  no  information  sufficient  to  form  a  belief 
as  to  whether  or  not  said  complainant  has  for  a  period  of  many  years 
last  past  been  engaged  in  the  preparation  and  sale  of  a  certain 
medicine  at  the  city  of  Baltimore  and  therefore  call  for  strict  proof 
of  same  although  defendants  are  informed  and  believe  that  complain- 
ant has  been  engaged  in  the  preparation  and  sale  of  a  medicine,  but 
these  defendants  on  information  and  belief  deny  that  said  medicine 
has  acquired  or  long  enjoyed  a  very  high  or  any  particular  reputation 


FORMS    OF    BILLS    AND    ANSWERS.  785 

as  a  remedy  for  the  prevention  or  cure  of  many  or  any  dis^jases,  but 
whether  it  is  sold  in  immense  or  any  considerable  quantities  to  com- 
plainant's great  profit  these  defendants  have  no  information  sufflcieac 
to  form  a  belief  although  defendants  believe  that  complainant  be 
sold  enough  of  said  medicine  to  make  some  profit. 

These  defendants  further  answering  said  bill  of  complaint  admit, 
on  information  and  belief,  that  said  complainant  as  alleged  In  said 
bill  has  adopted,  applied  and  used,  and  is  using  a  certain  label  wiiu 
the  words  and  representations  as  described  and  set  forth  in  said  bill, 
but  as  to  whether  or  not  as  set  forth  in  said  bill  said  label  has  been 
used  since  about  the  year  1879,  or  as  to  whether  or  not  said  complain- 
ant devised  or  originated  said  label,  these  defendants  have  no  informa- 
tion sufficient  to  form  a  belief,  and  therefore  calls  for  strict  proof 
of  said  allegations. 

These  defendants  further  answering  said  bill  of  complaint  admit  on 
information  and  belief  that  the  designation  "Browns  Iron  Bitters" 
has  come  to  be  associated  with  complainant's  medicine  or  product, 
but  whether  or  not  to  the  exclusion  of  all  others,  defendants  cannot 
say  as  matter  of  law,  but  defendants  say  as  matter  of  fact,  no  other 
Brown  Iron  Bitters  are  known  to  these  defendants,  and  that  those 
desiring  complainant's  medicine  are  in  the  habit  of  using  the  designa- 
tion "Browns  Iron  Bitters"  with  the  understanding  that  it  means  com- 
plainant's medicine  alone  since  there  are  no  other  Browns  Iron  Bitters 
made  up  or  sold  to  the  trade  as  defendants  are  informed  and  believe; 
and  that  whenever  the  said  designation,  Browns  Iron  Bitters  are  used, 
it  means  a  medicine  prepared  and  put  up  by  complainant  at  the  city 
of  Baltimore,  in  the  State  of  Maryland, 

These  defendants  further  answering  said  bill  of  complaint  say  they 
have  no  information  sufficient  to  form  a  belief  as  to  whether  or  not 
said  complainant  has  spent  large  sums  of  money  in  advertising 
amounting  to  hundreds  of  thousands  annually,  although  defendants 
believe  complainant  has  advertised  extensively.  Defendants  admit 
that  complainant's  output  has  been  of  great  magnitude,  amounting 
to  many  thousands  of  bottles  annually,  but  as  to  whether  or  not  said 
bottles  have  all  borne  a  label  consisting  in  part  of  the  words  "Browns 
Iron  Bitters,"  these  defendants  do  not  know,  but  believe  and  suppose 
it  is  so. 

These  defendants  admit  on  information  and  belief  that  the  said 
designation  "Browns  Iron  Bitters"  has  come  to  be  identified  with  said 
complainant's  product,  but  not  to  the  exclusion  of  all  others  as  matter 
of  legal  right,  although  as  before  stated,  these  defendants  know  of 
no  other  "Browns  Iron  Bitters"  in  the  trade.  Defendants  do  not  knov/ 
whether  or  not  said  designation  is  known  and  is  now  used  in  all  parts 
of  the  United  States  by  consumers  generally  when  they  desire  to  obtain 
the  said  preparation  of  complainant,  although  these  defendants  know 
of  no  other  preparation  of  the  same  designation. 

These  defendants  further  answering  said  bill  of  complaint  say  they 
have  no  information  sufficient  to  form  a  belief  as  to  whether  or  not 
50 


786  APPENDIX  J. 

said  designation  has  ever  been  employed  in  connection  with  any  other 
preparation  or  remedy,  and  therefore  calls  for  strict  proof  of  the 
same;  but  these  defendants  deny  that  the  said  designation  is  to  all 
intents  and  purposes,  or  to  any  intent  or  purpose  complainant's  trade- 
name or  trademark,  or  that  said  complainant  now  has  or  has  ever  had 
the  exclusive  right  to  the  use  of  said  designation  as  a  tradename  or 
trademark  for  a  medicinal  preparation  or  otherwise,  or  that  no  one 
except  complainant  has  had,  or  now  has  any  right  to  use  said  designa- 
tion as  a  tradename  or  trademark  for  a  medicinal  preparation  or 
otherwise;  and  these  defendants  further  answering  deny  that  they 
have  done  anything  which  is  fraudulent  or  which  will  be  restrained 
by  this  Honorable  Court. 

These  defendants  further  answering  said  bill  of  complaint  admit 
that  they  were  engaged  in  business  as  wholesale  druggists  at  the  city 
of  St.  Louis,  in  the  State  of  Missouri,  but  deny  that  they  have  been 
long  or  at  all  cognizant  of  the  high  reputation  or  any  particular 
reputation  of  complainant's  medicine,  but  admit  that  for  some  time 
they  have  known  of  the  said  designation  "Browns  Iron  Bitters." 

These  defendants  further  answering  said  bill  of  complaint  admit 
that  prior  to  the  commencement  of  this  suit  and  as  well  since  they 
had  and  have  sold  medicine  put  up  in  bottles  to  which  have  been 
attached  and  applied  labels  containing  the  words  "Browns  Iron  Tonic," 
but  these  defendants  explicitly  deny  that  such  sales  or  any  of  them 
were  or  have  been  made  in  order  to  injure  complainant  by  diverting 
any  profits  of  complainant  in  the  sale  of  its  medicine  or  otherwise,  or 
that  such  sales  were  fraudulently  made,  or  that  the  bottles  or  the 
labels  thereon  containing  the  words  "Browns  Iron  Tonic,"  were  in- 
tended by  these  defendants  or  any  of  them  to  indicate  that  the 
medicine  contained  in  said  bottles  was  prepared  and  put  up  by  com- 
plainant; and  these  defendants  deny  that  they  ever  have  fraudulently 
offered  or  caused  to  be  offered  or  sold  or  that  they  still  fraudulently 
offer  or  cause  to  be  offered  or  sold  in  large  or  any  quantities  the 
said  medicine  so  as  aforesaid  labelled  "Browns  Iron  Tonic,"  although 
these  defendants  admit  that  they  have,  as  of  right  they  might,  offered 
and  sold  and  still  offer  for  sale  said  "Browns  Iron  Tonic";  as  they 
have  bought  and  sold  complainant's  said  medicine,  but  without  loss 
or  injury  to  said  complainant. 

These  defendants  further  answering  said  bill  of  complaint,  deny 
that  large  or  small,  or  any  quantities  or  quantity  of  said  Browns  Iron 
Tonic  have  been,  through  any  act  of  these  defendants,  or  any  of  them, 
or  through  any  use  by  them  of  said  designation  of  "Browns  Iron 
Tonic"  at  any  time  sold  as  or  for  complainant's  "Browns  Iron  Bitters" 
or  mistaken  therefor  in  any  instance,  or  that  said  Complainant  has 
lost  anything  or  been  injured  thereby. 

These  defendants  further  answering  said  bill  of  complaint,  deny 
that  it  was  their  purpose  to  offer  or  sell  said  "Browns  Iron  Tonic" 
upon  any  reputation  established  by  complainant  or  as  or  for  com- 
plainant's said  alleged  celebrated  "Browns  Iron  Bitters";  and  defend- 


FORMS    OF    BILLS    AND    ANSWERS.  787 

ants  deny  that  any  of  their  acts  in  the  premises  have  been  or  are 
contrary  to  equity  or  good  conscience,  or  that  they  ought  to  be 
enjoined  from  the  further  sale  of  said  "Browns  Iron  Tonic." 

These  defendants  further  answering  said  bill  of  complaint  state 
that  while  they  claim  and  allege  that  the  words  "Browns  Iron  Bitters" 
are  not  the  subject  of  trademark  or  tradename,  and  that  defendants 
or  anybody  else  might  legally  use  the  same  words  especially  if  as  in 
this  case,  the  entire  designation  is  not  used  but  is  changed  so  as  to 
exclude  the  idea  of  any  misleading  or  fraudulent  purpose;  yet  these 
defendants  have  as  good  right  as  complainant  possibly  could  have 
to  the  use  of  the  entire  designation  "Browns  Iron  Bitters"  and  as 
ground  of  this  claim  and  as  further  answer  to  said  bill  of  complaint, 
these  defendants  aver  on  information  and  belief,  and  charge  the  truth 
to  be  that  in  or  near  the  summer  of  1881,  one  E.  L.  B.  in  connection 
"With  one  C.  J.  L.  commenced  putting  up  and  selling  the  said  prep- 
aration "Browns  Iron  Tonic"  at  Little  Rock,  Arkansas,  as  a  wholly 
distinct  preparation  from  "Browns  Iron  Bitters",  and  without  any 
intention  or  purpose  to  imitate  complainant's  said  preparation,  which 
at  that  time  had  not  been  advertised  or  sold  to  any  great  extent,  as 
these  defendants  on  information  and  belief  aver.  Subsequently  to  this 
date,  as  these  defendants  on  information  and  belief,  aver,  said  B.  sold 
out  his  interest  in  said  preparation  to  said  C.  J.  L.,  who  has  since 
that  time  been  putting  up,  at  Little  Rock,  Arkansas,  said  medicine, 
and  offering  it  to  the  public,  and  these  defendants  have  bought  some 
of  it  and  sold  some  of  it,  viz:  Four  gross  bottles  before  March  24th, 
1886,  and  since  that  date  about  seven  gross  bottles. 

These  defendants  further  aver  that  the  said  preparation  "Browns 
Iron  Tonic"  as  offered  and  sold  by  him,  as  well  as  by  said  B.  &  L. 
and  since  by  said  L.,  has  been  put  up  in  cartons  and  bottles  wholly 
differing  in  size,  color  and  appearance  from  said  complainant's  bottles 
and  with  labels  adapted  and  applied  to  the  bottles  wholly  differing 
in  size,  color,  appearance  and  details  from  complainant's  labels, 
which  are  enclosed  in  wrappers  wholly  different  from  said  cartons  of 
"Browns  Iron  Tonic",  so  that  the  public  could  not  be  misled  or  the 
complainant  injured,  which  has  always  been  very  far  from  these 
defendants'  purpose  or  object,  and  as  well  very  far  from  said  B.  and 
L.'s  purpose  or  object  as  these  defendants  believe;  these  defendants 
exhibit  and  file  with  this  answer  a  bottle  of  "Browns  Iron  Tonic" 
■with  its  carton  and  label  marked  exhibit  "C"  and  as  well  a  label, 
wrapper  and  bottle  of  complainant's  preparation,  marked  Exhibit  "D", 
and  pray  that  the  Court  will  consider  them  as  part  of  this  answer. 

These  defendants  further  answering  said  bill  of  complaint,  on  in- 
formation and  belief,  aver  and  charge  the  truth  to  be  that  early  in 
1882,  the  said  complainant  entered  into  a  correspondence  with  said 
L.  &  B.  with  respect  to  said  "Browns  Iron  Tonic",  and  said  L.  &  B. 
sent  complainant  a  sample  bottle  of  their  Tonic,  wrapper  and  label. 
Whereupon  as  a  result  of  said  correspondence  and  examination,  said 
complainant    in    a    letter   to    said    L.    &    B.    expressed    themselves    as 


IbS  APPENDIX  J. 

satisfied  that  said  "Browns  Iron  Tonic"  did  not  conflict  with  said 
"Browns  Iron  Bitters",  which  letter  was  and  is  in  words  and  figures 
as  follows:  — 

Baltimore,  August  28th,  1882. 
Mess.  C.  J.  Lincoln  &  Co., 

Little  Rock,  Ark. 
Gentlemen: — Inclosing  your   invoice   thank  you   for  your   kind   and 
satisfactory  letter.     "We  wish  the  Browns  Iron  Tonic  a  success  as  upon 
examination   we   cannot   see  where    it   can   conflict  with   us   except  in 
the  multiplicity  of  the  Brown  family. 

Your  fr'ds, 

Brown  Chemical  Co. 

Said  complainant  has,  as  these  defendants  are  informed  and  believe, 
ever  since  the  date  of  said  letter,  with  full  knowledge  of  all  the  facts 
and  after  examination  with  respect  to  same,  made  no  complaint  of  or 
objections  to  the  putting  up  and  sale  of  said  "Browns  Iron  Tonic" 
until  just  before  this  suit  was  brought,  and  so  by  its  said  letter  and 
its  long  silence  and  acquiescence  in  the  manufacture  and  sale  of  said 
"Browns  Iron  Tonic"  said  complainant  ought  not  in  equity  and  good 
conscience,  if  for  no  other  reason,  to  be  granted  in  a  court  of  equity 
any  relief  in  the  premises. 

These  defendants  further  answering  said  bill  of  complaint,  deny 
that  the  complainant  has  suffered  by  the  acts  of  these  defendants, 
damage  to  the  extent  of  Ten  Thousand  Dollars,  or  any  other  sum,  or 
that  said  complainant  has  been  done  any  wrong  by  these  defendants 
or  is  entitled  to  any  relief  in  the  premises. 

And  these  defendants  deny  all  and  all  manner  of  unlawful  com- 
bination and  confederacy,  wherewith  they  are  by  the  said  bill  charged, 
without  this,  that  any  other  matter,  cause  or  thing  in  the  complain- 
ant's said  bill  of  complaint  contained,  material  or  necessary  for  these 
defendants  to  make  answer  unto,  and  not  herein  and  hereby  well  and 
sufficiently  answered,  confessed,  traversed  and  avoided  or  denied,  is 
true,  to  the  knowledge  or  belief  of  these  defendants;  all  which  matter 
and  things  these  defendants  are  ready  and  willing  to  aver,  maintain 
and  prove,  as  this  Honorable  Court  shall  direct;  and  pray  to  be  hence 
dismissed  with  their  reasonable  costs  and  charges  in  this  behalf  most 
wrongfully  sustained. 

B.  A,  &  McK., 
Solicitors  for  Defendants. 


APPENDIX  K. 

FORMS  OF  INJUNCTION. 

INTERLOCUTORY  DECREE. 

(Benkert  v.  Feder,  34  Fed.  Rep.  534.) 

In  the  United   States  Circuit  Court,   Northern   District  of 
California,   Ninth   Judicial  Circuit. 

WuLLiAM  J.   Benkkkt,   Complainant, 
vs. 
Samuel  Feueb  and  Auuelia  Rosenthal. 
Executrix  of  the  Last  Will  and  Testa- 
ment of  Mouuis  Rosenthal,  Deceased, 
Defendants. 


)■      No.   3507. 


At  a  stated  term,  to  wit,  the  February  term,  1888,  of  the  circuit 
court  of  the  United  States  of  America  of  the  ninth  judicial  circuit,  in 
and  for  the  northern  district  of  California,  held  at  the  court  room 
thereof,  in  the  city  and  county  of  San  Francisco,  on  Monday,  the  1st 
day  of  June,  A.  D.,  1888. 

Present:    The  Honorable  Lorenzo  Sawyer,  circuit  judge. 

This  cause  having  come  on  to  be  heard  upon  the  bill  of  complaint 
herein,  the  answer  of  the  defendants,  and  replication  of  the  complain- 
ant, the  bill  of  revivor,  the  stipulation  of  the  parties  in  regard  thereto, 
and  the  proofs,  documentary  and  written,  taken  and  filed  in  said 
cause,  and  having  been  argued  by  counsel  for  the  respective  parties 
and  submitted  to  the  court  for  consideration  and  decision: 

Now,  therefore,  on  consideration  thereof,  it  is  ordered,  adjudged  and 
decreed,  and  the  court  doth  hereby  order,  adjudge  and  decree,  as  fol- 
lows, to  wit: 

That  the  name  of  "C.  Benkert  &  Son"  has  been  a  tradename  and 
also  a  trademark  upon  boots  and  shoes  for  upwards  of  twenty-five 
years  last  past,  and  as  such  tradename  and  trademark  is  good  and 
valid  in  law. 

That  the  complainant.  William  J.  Benkert.  is,  and  ever  since  the 
year  1876  has  been,  the  exclusive  owner  of  said  tradename  and  trade- 
mark, and  during  all  said  time,  at  the  city  of  Philadelphia,  in  the  state 
of  Pennsylvania,  has  carried  on  the  business,  under  the  said  trade- 
name, of  manufacturing  and  selling  boots  and  shoes,  and  during  all 
said  time  has  stamped  and  printed,  and  used  upon  all  the  said  boots 

789 


790  APPENDIX  K. 

and  shoes  so  made  and  sold  by  him,  the  said  words  "C  Benkert  &  Sou" 
as  a  trademark. 

That  the  original  defendants  herein,  Samuel  Feder  and  Morris 
Rosenthal,  have  infringed  upon  the  said  tradename  and  trademark 
and  upon  the  exclusive  rights  of  the  complainant  under  the  same  — 
that  is  to  say,  by  manufacturing  and  selling  within  the  ten  years 
last  past,  and  prior  to  the  commencement  of  this  suit,  large  quantities 
of  boots  and  shoes  upon  each  of  which  they  have  placed  in  plain,  con- 
spicuous, printed  letters  the  name  "C.  F.  Benkert  &  Son"  in  imitation 
of  the  name  "C.  Benkert  &  Son"  as  charged  in  the  bill  of  complaint. 

And  it  is  further  ordered,  adjudged  and  decreed,  that  the  complain- 
ant do  have  and  recover  of  and  from  the  defendants,  Samuel  Feder 
and  Aurelia  Rosenthal,  executrix  of  the  last  will  and  testament  of 
Morris  Rosenthal,  deceased,  the  profits,  gains  and  advantages  which 
the  said  defendants  or  either  of  them  have  received  or  made,  or  which 
have  arisen  or  accrued  to  them,  or  either  of  them,  from  the  infringe- 
ment of  the  said  tradename  and  said  trademark  of  "C.  Benkert  &  Son" 
by  the  making,  using  and  selling,  or  the  making,  using  or  selling  of 
said  boots  and  shoes  having  placed  thereon  the  name  "C.  F.  Benkert  & 
Son"  or  any  other  name  in  imitation  of  complainant's  tradename  and 
trademark  of  "C.  Benkert  &  Son." 

And  it  is  further  ordered,  adjudged  and  decreed,  that  the  said  com- 
plainant do  recover  of  the  defendants  his  costs  and  charges  and 
disbursements  in  this  suit  to  be  taxed. 

And  it  is  further  ordered,  adjudged  and  decreed,  that  it  be  referred 
to  S.  C.  Houghton,  Esq.,  the  standing  master  in  chancery  of  this 
court,  residing  in  the  city  and  county  of  San  Francisco,  northern  dis- 
trict, and  state  of  California,  to  ascertain  and  take,  and  state,  and 
report  to  this  court,  an  account  of  the  number  of  pairs  of  boots  and 
shoes  manufactured  and  sold  or  manufactured  or  sold  by  the  original 
defendants,  Samuel  Feder  and  Morris  Rosenthal,  or  either  of  them, 
and  also  the  gains,  profits  and  advantages  which  the  said  original 
defendants  or  either  of  them,  or  the  estate  of  said  Morris  Rosenthal, 
have  received,  or  made,  or  which  have  arisen  or  accrued  to  them  or 
either  of  them,  or  it,  from  infringing  the  said  exclusive  rights  of  the 
said  complainant  by  the  manufacturing  and  selling,  or  manufacturing 
or  selling,  of  boots  and  shoes  having  stamped  and  placed  upon  them 
the  infringing  trademark  in  imitation  of  the  trademark  of  "C.  Benkert 
&  Son." 

And  it  is  further  ordered,  adjudged  and  decreed,  that  the  complain- 
ant on  such  accounting  have  the  right  to  cause  an  examination  of  the 
defendants,  Samuel  Feder  and  Aurelia  Rosenthal,  and  each  of  them, 
and  their  and  each  of  their  agents,  servants,  or  workmen  or  other 
witnesses  as  may  be  necessary  to  take  said  accounting,  and  also  the 
production  of  the  books,  vouchers  and  documents  of  which  said  defend- 
ants, Samuel  Feder  or  Aurelia  Rosenthal,  and  their  and  each  of  their 
attorneys,  servants,  agents  and  workmen  may  be  possessed,  and  cause 


FORMS  OF  INJUNCTION.  791 

them    to  attend    for  sucli    purposes   before   said   master   from    time   to 
time  as  such  master  shall  direct. 

And  it  is  further  ordered,  adjudged  and  decreed,  that  a  perpetual 
injunction  be  issued  in  this  case,  against  the  said  defendants.  Samuel 
Feder  and  Aurelia  Rosenthal,  restraining  and  perpetually  enjoining 
them  and  each  of  them,  and  their  and  each  of  their  servants,  agents, 
clerks  and  workmen,  and  all  persons  claiming  or  holding  under  or 
through  them,  from  manufacturing  or  using  or  selling,  or  in  any  way 
disposing  of,  boots  and  shoes  or  boots  or  shoes  having  stamped,  or 
printed,  or  in  any  way  marked  thereon  the  name  "C.  F.  Benkert  & 
Son,"  or  any  other  name  in  imitation  or  simulation  of  the  said  trade- 
mark "C.  Benkert  &  Son,"  pursuant  to  'he  prayer  of  the  said  bill  of 
complaint. 

LOKE.NZO   SaWYEU. 

United  States  Circuit  Judge,  Ninth 
Judicial  Circuit. 


WRIT  OF  INJUNCTION. 

In  the  Circuit  Court  of  the  United  States  for  the  Ninth  Judicial  Cir- 
cuit in  and  for  the  Northern  District  of  California. 

BooRD  &  Son,  Complainant,         ^ 

vs.  I       In  Equity. 

E.  G.  Lyons  Company,  Respondent,  j 

The  President  of  the  United  States.  To  E.  G.  Lyons  Company,  its 
clerks,  agents,  servants  and  employees.  Greeting: 
Whereas,  It  has  been  represented  to  us  in  the  circuit  court  of  the 
United  States  for  the  northern  district  of  California  that  Boord  &  Son, 
a  corporation,  of  London,  England,  have  a  valid  trademark  in  a  device 
consisting  of  a  cat  standing  upon  a  barrel,  as  applied  to  bottled  gin. 
and  that  you.  the  said  E.  G.  Lyons  Company,  have  infringed  said  right 
by  dealing  in  bottled  gin  bearing  an  imitation  of  said  trademark: 

Now,  therefore,  you.  the  said  E.  G.  Lyons  Company,  your  clerks, 
agents,  servants  and  employees,  are  strictly  commanded  and  enjoined 
under  the  pains  and  penalties  which  may  fall  upon  you,  and  each  of 
you,  in  case  of  disobedience,  that  you  forthwith  and  until  the  further 
order,  judgment  and  decree  of  this  court,  desist  from  dealing  in  any 
gin  bottled  in  imitation  of  complainant's  gin  and  bearing  the  device 
of  a  cat  standing  upon  a  barrel. 

Witness,  the  Honorable  Melville  W.  Fuller,  Chief  Justice  of  the 
United   States,   this    14th   day   of  October,    in   the  year   of   our 
[seal]     Lord   one   thousand    eight   hundred   and   ninety-eight,   and   of 
our  Independence  the  123d. 

SouTiiAKi)  Hoffman,  Clerk. 


792  APPENDIX  K. 


FINAL  DECREE. 

(Royal  Baking  Powder  Co.  v.  Royal  Chemical  Co., 
Price  &  Steuart,  1.) 

This  cause  having  been  tried  at  a  special  term  of  this  court,  before 
the  Hon.  Hooper  C.  Van  Vorst,  one  of  the  justices  thereof,  without  a 
jury,  and  the  proofs  and  allegations  of  the  parties  having  been  heard, 
the  said  court  gave  its  decision  in  writing  in  favor  of  the  plaintiffs, 
and  against  the  defendants,  with  costs;  which  decison  has  been  filed 
wth  the  clerk  of  this  court: 

Now,  in  pursuance  thereof,  it  is  hereby  adjudged  that  the  plaintiffs 
are  entitled  to  judgment  on  all  the  issues,  and  judgment  is  hereby 
rendered  in  favor  of  the  plaintiffs,  and  against  the  defendants  thereon, 
and  it  is  hereby  also  adjudged  that  the  plaintiffs  are  entitled  to  the 
exclusive  use  of  the  term  "Royal,"  as  their  trademark,  on  labels 
attached  to  baking  powder  manufactured  by  them,  and  in  connection 
with  the  words  "baking  powder."  And  it  is  further  adjudged,  that 
the  use  by  the  defendants  of  the  word  "Royal"  on  labels  affixed  to 
baking  powder,  made  by  the  defendants,  or  printed  or  written  on 
boxes,  labels  or  otherwise  howsoever,  in  connection  with  baking 
powder  made  by  them,  was  in  violation  of  the  plaintiff's  rights. 

And  it  is  further  adjudged,  that  the  defendants,  their  agents,  clerks, 
workmen,  servants  and  attorneys,  perpetually  refrain,  and  they  are 
hereby  perpetually  enjoined  and  restrained,  from  using  the  term  or 
designation  "Royal"  on,  or  around,  or  in  connection  with,  any  cans, 
boxes  or  other  packages,  of  any  nature  or  kind  whatever,  containing 
baking  powder,  or  in  any  sign,  invoice,  billhead,  card,  circular,  adver- 
tisement, in  connection  with  baking  powder,  and  from  using  the 
name  "Royal  Baking  Powder,"  and  from  selling  and  disposing  of  any 
baking  powder  with  the  word  "Royal"  attached  thereto,  except  on  such 
baking  powder  as  is  obtained  from  the  plaintiffs. 

And  it  is  further  adjudged,  that  the  plaintiffs  recover  of  the  defend- 
ants their  costs  and  disbursements  in  this  action. 


INJUNCTION. 

(Gillis  V.  Hall,  2  Brewst.  342.) 

Defendants  enjoined  "from  making  and  selling  any  preparations  as 
and  for  the  preparations  specified  in  plaintiff's  label,  and  from  using 
the  name  of  Hall,  or  R.  P.  Hall,  or  Reuben  P.  Hall,  either  singly  or 
in  connection  with  others,  upon  any  such  preparation;  or  from  making 
or  using  any  trademark,  label  or  wrapper  in  imitation  of  those  now 
in  use  by  plaintiff." 


FORMS  OF  INJUNCTION.  793 

(Colton  V.  Thomas,  2  Brewst.  308.) 

Injunction  against  defendant  "restraining  the  further  use  of  the 
cards  and  signs  complained  against  in  the  bill;  and  also  to  restrain 
the  employment  by  him  of  any  device  by  which  the  patients  and 
patrons  of  the  plaintiff,  without  the  exercise  of  excessive  care,  will 
be  induced  to  suppose  that  the  defendant's  place  of  business  is  the 
place  of  business  of  the  Colton  Dental  Association." 

(Gillott  V.  Esterbrook,  47  Barb.  455.) 

"Ordered  and  adjudged  that  the  said  defendants,  R.  E.,  R.  E.,  Jr., 
J.  C,  Jr.,  and  J.  B.,  and  each  of  them,  their  agents  and  servants,  do 
absolutely  and  perpetually  desist  and  refrain  from  infringing  or  using 
the  said  trademark  of  the  plaintiff,  and  from  making  or  selling  pens 
with  said  numerals  '303'  impressed  on  the  boxes  or  packages  contain- 
ing steel  pens." 

(Jurgensen  v.  Alexander,  24  How.  Pr.  269;  Cox,  298.) 

Ordered:  (1)  "That  the  defendant,  his  agents,  clerks,  servants  and 
all  others  employed  under  or  in  connection  with  him  be  perpetually 
enjoined  and  restrained  from  disposing  of,  selling,  or  causing  to  be 
disposed  of  or  sold,  any  watches  bearing  the  false,  simulated  and 
spurious  stamp  or  mark,  'Jules  Jurgensen,  Copenhagen.'  " 

2.  "That  the  defendant  do  produce  before  Nathaniel  Jarvis,  Esq., 
appointed  herein  referee  for  such  purpose,  the  said  watches,  which 
at  the  time  of  the  commencement  of  this  suit  were  in  defendant's 
possession,  and  had  upon  them  the  said  false,  simulated  and  spurious 
trademark,  to  be  erased  or  obliterated  therefrom,  by  or  under  the 
direction  of  the  said  referee,  at  the  cost  and  expense  of  the  said 
defendant." 

(Coffeen  v.  Brunton,  4  McLean,  516;   Cox,  82.) 

"To  enjoin  the  defendant  from  using  the  label  or  directions  accom- 
panying the  liniment  he  sells  as  aforesaid,  or  other  labels  or  directions, 
or  any  advertisements  or  handbills  respecting  the  same  words  which 
are  used  by  the  complainant  on  his  label  or  directions,  and  which  tend 
to  produce  an  impression  on  the  purchaser  and  the  public  that  the  lini- 
ment sold  by  the  defendant  contains  the  same  ingredients  as  the 
'Chinese  Liniment,'  and  is,  in  effect,  the  same  medicine." 

(N.  K.  Fairbank  Co.  v.  R.  W.  Bell  Mfg.  Co.,  77  Fed.  Rep.  869.) 

Defendant  enjoined  from  putting  up  and  selling  or  offering  for  sale 
"The  particular  form  of  packages  which  has  been  referred  to  in  the 
bill  and  put  in  evidence  as  'defendant's  second  package,'  or  any  other 
form  of  package  which  shall,  by  reason  of  the  collocation  of  size,  shape, 
colors,  lettering,  spacing  and  ornamentation,  present  a  general  appear- 
ance as  closely  resembling  the  'complainant's  package,'  referred  to  in 
the  bill  and  marked  in  evidence,  as  does  the  said  'defendant's  second 


794  APPENDIX  K. 

package.'  This  injunction  shall  not  be  construed  as  restraining 
defendant  from  selling  packages  of  the  size,  weight,  and  shape  of 
compainant's  package,  nor  from  using  the  designation  'Buffalo  soap 
powder'  nor  from  making  a  powder  having  the  appearance  of  com- 
plainant's 'Gold  Dust.'  nor  from  using  paper  of  a  yellow  color  as  wrap- 
pers for  its  packages,  provided  such  packages  are  so  differentiated  in 
general  appearance  from  said  'complainant's  package'  that  they  are  not 
calculated  to  deceive  the  ordinary  purchaser." 


MANDATE      OF      CIRCUIT     COUilT      OF    APPEALS,      AFFIRMING 
DECREE  OF  INJUNCTION. 

(Feder  v.  Benkert,  76  Fed.  Rep.  613.) 

United  States  of  America — ss. 

The  President  of  the  United  States  of  America,  To  the  Honorable 
the  Judges  of  the  Circuit  Court  of  the  United  States  for  the  North- 
em  District  of  California,  Greeting: 

Whereas,  lately  in  the  circuit  court  of  the  United  States  for  the 
northern  district  of  California,  before  you,  or  some  of  you,  in  a  cause 
between  William  J.  Benkert,  complainant,  and  Samuel  Feder,  and 
Aurelia  Rosenthal,  executrix  of  the  last  will  and  testament  of  Morris 
Rosenthal,  deceased,  respondents,  a  decree  was  duly  entered  in  favor  of 
the  said  complainant,  which  said  decree  is  of  record  in  the  office  of  the 
clerk  of  the  said  circuit  court,  to  which  record  reference  is  hereby  made 
and  the  same  is  hereby  expressly  made  a  part  hereof,  and  as  by  the  in- 
spection of  the  transcript  of  the  record  of  the  said  circuit  court,  which 
was  brought  into  the  United  States  circuit  court  of  appeals  for  the  ninth 
circuit,  by  virtue  of  an  appeal  agreeably  to  the  act  of  congress,  in  such 
cases  made  and  provided,  fully  and  at  large  appears. 

And  Whereas,  in  the  year  of  our  Lord  one  thousand  eight  hundred 
and  ninety-five,  the  said  cause  came  to  be  heard  before  the  said  circuit 
court  of  appeals,  on  the  said  transcript  of  record,  and  was  argued  by 
counsel: 

On  consideration  whereof,  it  is  now  here  ordered,  adjudged  and 
decreed,  that  the  decree  of  the  said  circuit  court  in  this  cause  be,  and 
the  same  is  hereby,  affirmed,  with  costs. 

You,  therefore,  are  hereby  commanded  that  such  further  proceedings 
be  had  in  said  cause  as  according  to  right  and  justice,  and  the  laws 
of  the  United  States,  ought  to  be  had,  the  said  appeal  notwithstanding. 

Witness,  the  Honorable  Melville  W.  Fuller,  Chief  Justice  of  the 
United  States,  the  16th  day  of  November,  in  the  year  of  our  Lord  one 
thousand  eight  hundred  and  ninety-five. 

F  D.  Monckton, 
Clerk  of  the  United  States  Circuit  Court 
of  Appeals  for  the  Ninth  Circuit. 


APPENDIX    L. 


CLASSIFICATION  OF  TRADEMARKS. 

The  following  classification  of  registered  trademarks  has  been  pub- 
lished in  connection  with  the  rules  of  the  Patent  Office.  It  is  understood 
to  be  a  classification  of  pre-existing  registrations  rather  than  as  a 
guide  to  the  classification  to  be  observed  in  filing  application: 


Agricultural  Machines  and   Imple- 
ments. 

Baking  Powder  and  Yeast. 

Beltings,  Hose,  and  Packings. 

Beverages. 

Blackings  and  Leather  Dressings. 

Boots,    Shoes,   and   Lasts. 

Brooms   and   Brushes. 

Buttons. 

Canned   Goods. 

Carpets,  etc. 

Cement,    Plaster,    and    Bricks. 

Cleaning   and    Polishing    Prepara- 
tions. 

Coffee   and   Tea. 

Conductors  and  Insulators. 

Confectionery. 

Corsets. 

Cured    Meats. 

Dairy  Machines  and   Products. 

Dentistry. 

Drugs  and   Chemicals. 

Dry  Goods. 

Electrical      Apparatus     and     Sup- 
plies. 

Fancy   Goods. 

Fertilizers. 

Firearms,    Ammunition,    and    Ex- 
plosives. 

Fire  Extinguishers. 

Flour. 

Foods    and    Relishes. 

Fuel. 

Furniture. 

79; 


Games  and  Toys. 

Glassware. 

Gloves. 

Headwear. 

Household   Articles. 

Inks. 

Jewelry  and  Plated  Ware. 

La'mps,  Lanterns,  etc. 

Lard   and   Tallow. 

Laundry  Machines  and  Articles. 

Leather  and  Saddlery. 

Locks   and    Hardware. 

Lumber  and   Manufactures. 

Machines  and  Devices. 

Malt  LiQuors. 

Matches. 

Medical    Compounds. 

Metals  and  Manufactures. 

Miscellaneous. 

Musical    Instruments. 

Needles  and  Pins. 

Oils  and   Lubricants. 

Optics  and  Measuring  Instru- 
ments. 

Paints  and  Painters'  Supplies. 

Paper  and    Envelopes. 

Poisons   for  Animals. 

Publications. 

Receptacles. 

Rope,  Cord  and  Twine. 

Rubber  Goods. 

Seeds.    Plants  and    Trees. 

Sewing  Machines  and  Attach- 
ments. 


796 


APPENDIX  L. 


Sewing  Silk,  Cotton,  and  Thread. 

Shirts,  Collars,  and  Cuffs. 

Soap. 

Spices,  Mustard,  and  Salt. 

Spirituous    Liquors. 

Starch,  Cornstarch,  and  Products. 

Stationery  Miscellany. 

Steam   and    Plumbing    Supplies. 

Stoves  and  Furnaces. 

Sugar,  Syrup,  and  Molasses. 


Surgical   Instruments    and    Appli- 
ances. 
Tailoring  and    Clothing. 
Time-keeping   Instruments. 
Tobacco  and   Tobacco   Products. 
Toilet   Articles   and    Preparations. 
Tools  and  Cutting  Instruments. 
Umbrellas,  Parasols,  and  Canes. 
Underwear  and  Furnishings. 
Vehicles. 
Wines. 


APPENDIX  M. 

BIBLIOGRAPHY. 

AMERICAN. 

Browne.  A  Treatise  on  the  Law  of  Trademarks.  Boston.  1885.  A  Sup- 
plement to  same.     Boston.     1898. 

Bump.  Law  of  Patents,  Trademarks  and  Copyrights.  (2d  ed.)  Balti- 
more.    1884. 

Coddington.  A  Digest  of  the  Law  of  Trademarks.  New  York.    1878. 

Cox.  American  Trademark  Cases.  A  compilation  of  all  the  reported 
Trademark  Cases  decided  in  the  American  courts  prior  to  1861. 
Cincinnati.     1871. 

Cox.  A  Manual  of  Trademark  Cases  including  Sebastian's  Digest. 
(English)   (2d  ed.)     Boston.  1892. 

Greely.     Foreign  Patent  and  Trademark  Laws.    Washington.  1899. 

Hopkins.    Law  of  Unfair  Trade.    Chicago.  1900. 

Newton.    Digest  of  Patent  Office  Trademark  Laws.    Washington.    1896. 

Paul.     The  Law  of  Trademarks.     St.  Paul.    1903. 

Price  &  Steuart.  American  Trademark  Cases  reported  between  1879 
and  1887.    Baltimore.    1887. 

Upton.    A  Treatise  on  the  Law  of  Trademarks.    Albany.    1860. 

ENGLISH. 

Adams.    Law  of  Trademarks.    London.    1886. 

Allan.    Law  Relating  to  Good-will.    London.    1889. 

Barclay,  Law  of  France  Relating  to  Industrial  Property.    London.   1881, 

Cartmell.     Abstract  of  Trademark  Cases  (1876-1892).  London.  1893. 

Edmunds.     Patents,  Designs  and  Trademarks  Acts.     London.     1895. 

Fulton.    Treatise  on  Patents,  Trademarks  and  Designs.    London.    1894. 

Hart.     Trademarks.     London.     1889. 

Kerly.    Law  of  Trademarks.    London.     (2d  ed.)     1901. 

Lawson.     Law  and   Practice  under  the   Patents,   Designs   and   Trade-« 

marks  Acts.    London.    1889. 
Payn.     Merchandise  Marks  Act.     1887.     London.     1888. 
Sebastian.    Digest  of  Cases  of  Trademark,  etc.    London.    1879. 
Sebastian.     Law  of  Trademarks.     London.     (4th  ed.)     1899. 
Slater.     Copyright  and   Trademarks,   with  particular  reference  to  lij . 

fringement.     London.     1884. 


797 


APPENDIX  N. 

INTERNATIONAL  ARRANGEMENTS. 

INTERNATIONAL  CONVENTION  FOR  THE  PROTECTION  OF 
INDUSTRIAL  PROPERTY. 

(Signed   at  Paris,   March  20,  1883.     Ratifications  exchanged   at  Paris, 

June  6,  1884.) 

(Official  Translation.) 

His  Majesty  the  King  of  the  Belgians,  His  Majesty  the  Emperor  of 
Brazil,  His  Majesty  the  King  of  Spain,  the  President  of  the  French 
Republic,  the  President  of  the  Republic  of  Guatemala,  His  Majesty  the 
King  of  Italy,  His  Majesty  the  King  of  the  Netherlands,  His  Majesty 
the  King  of  Portugal  and  the  Algarves,  the  President  of  the  Republic  ol 
Salvador,  His  Majesty  the  King  of  Servia,  and  the  Federal  Council  of 
the  Swiss  Confederation, 

Being  equally  animated  with  the  desire  to  secure  by  mutual  agree- 
ment complete  and  effectual  protection  for  the  industry  and  commerce 
of  their  respective  subjects  and  citizens,  and  to  provide  a  guarantee  for 
the  rights  of  inventors,  and  for  the  loyalty  of  commercial  transactions, 
have  resolved  to  conclude  a  convention  to  that  effect,  and  have  named 
as  their  plenipotentiaries,  that  is  to  say:  [Here  follow  the  appoint- 
ments of  the  plenipotentiaries.] 

Who  having  communicated  to  each  other  their  respective  full  powers, 
found  in  good  and  due  form,  have  agreed  upon  the  following  Articles: 

Article  I. 

The  governments  of  Belgium,  Brazil,  Spain,  France,  Guatemala,  Italy, 
Holland,  Portugal,  Salvador,  Servia  and  Switzerland  constitute  them- 
selves into  a  union  for  the  protection  of  industrial  property. 

Article  II. 

The  subjects  or  citizens  of  each  of  the  contracting  states  shall,  in 
all  the  other  states  of  the  union,  as  regards  patents,  industrial  designs 
or  models,  trademarks  and  tradenames,  enjoy  the  advantages  that  their 
respective  laws  now  grant,  or  shall  hereafter  grant,  to  their  own  sub- 
jects or  citizens. 

Consequently  they  shall  have  the  same  protection  as  the  latter,  and 
the  same  legal  remedy  against  any  infringement  of  their  rights,  pro- 
vided they  observe  the  formalities  and  conditions  imposed  on  subjects 
or  citizens  by  the  internal  legislation  of  each  state. 

798 


INTERNATIONAL    ARRANGEMENTS.  799 

Article  III. 

Subjects  or  citizens  of  states  not  forming  part  of  the  union,  who  are 
domiciled  or  have  industrial  or  commercial  establishments  in  the  ter- 
ritory of  any  of  the  states  of  the  union,  shall  be  assimilated  to  the  sub- 
jects or  citizens  of  the  contracting  states. 

Article  IV. 

Any  person  who  has  duly  applied  for  a  patent,  industrial  design  or 
model,  or  trademark  in  one  of  the  contracting  states,  shall  enjoy,  as 
regards  registration  in  the  other  states,  and  reserving  the  rights  of 
third  parties,  a  right  of  priority  during  the  periods  hereinafter  stated. 

Consequently,  subsequent  registration  in  any  of  the  other  states  of 
the  union  before  expiry  of  these  periods  shall  not  be  invalidated 
through  any  acts  accomplished  in  the  interval;  either,  for  instance,  by 
another  registration,  by  publication  of  the  invention,  or  by  the  working 
of  it  by  a  third  party,  by  the  sale  of  copies  of  the  design  or  model,  or 
by  use  of  the  trademark. 

The  above  mentioned  terms  of  priority  shall  be  six  months  for  pat- 
ents, and  three  months  for  industrial  designs  and  models  and  trade- 
marks.   A  month  longer  is  allowed  for  countries  beyond  sea. 

Article  V. 
(Relates  only  to  patents.) 

Article  VI. 

Every  trademark  duly  registered  in  the  country  of  origin  shall  be 
admitted  for  registration,  and  protected  in  the  form  originally  regis- 
tered in  all  the  other  countries  of  the  union.' 

That  country  shall  be  deemed  the  country  of  origin  where  the  appli- 
cant has  his  chief  seat  of  business. 

If  this  chief  seat  of  business  is  not  situated  in  one  of  the  countries 
of  the  union,  the  country  to  which  the  applicant  belongs  shall  be 
deemed  the  country  of  origin. 

Registration  may  be  refused  if  the  object  for  which  it  is  solicited  is 
considered  contrary  to  morality  or  public  order. 

Article  VII. 
The  nature  of  the  goods  on  which  the  trademark  is  to  be  used  can, 
in  no  case,  be  an  obstacle  to  the  registration  of  the  trademark. 

Article  VIII. 
A  tradename  shall  be  protected   in   all   the  countries  of  the  union, 
without  necessity   of   registration,   whether   it  form  part  or  not   of  a 
trademark- 


'  No  effect  can  be  given  to  this  or  any  other  article  of  the  convention  by  the 
courts  of  Great  Britain,  except  so  far  as  It  is  embodied  in  section  103  of  the 
Patents  Act.  1883.  Re  California  Fig  Syrup  Co..  40  Ch.  D.  620.  And  to  be  regis- 
tered in  Great  Britain,  a  foreign  mark  must  contain  one  of  the  essential  partic- 
ulars defined  in  section  64  of  said  act.  Re  Carter  Medicine  Co.,  L.  R.  (1892), 
3    Ch.    D.    472. 


800  APPENDIX  N. 


Article  IX. 

All  goods  illegally  bearing  a  trademark  or  tradename  may  be  seized 
on  importation  into  those  states  of  the  union  where  this  mark  or  name 
has  a  right  to  legal  protection. 

The  seizure  shall  be  effected  at  the  request  of  either  the  proper  pub- 
lic department  or  of  the  interested  party,  pursuant  to  the  internal  legis- 
lation of  each  country. 

Aeticle  X. 

The  provisions  of  the  preceding  article  shall  apply  to  all  goods  falsely 
bearing  the  name  of  any  locality  as  indication  of  the  place  of  origin, 
when  such  indication  is  associated  with  a  tradename  of  a  fictitious 
character  or  assumed  with  a  fraudulent  intention. 

Any  manufacturer  of,  or  trader  in,  such  goods,  established  in  the 
locality  falsely  designated  as  the  place  of  origin,  shall  be  deemed  an 
interested  party. 

Article  XI. 

The  high  contracting  parties  agree  to  grant  temporary  protection  to 
patentable  inventions,  to  industrial  designs  or  models,  and  trademarks, 
for  articles  exhibited  at  official  or  officially  recognized  international 
exhibitions. 

Article  XII. 

Each  of  the  high  contracting  parties  agrees  to  establish  a  special 
government  department  for  industrial  property,  and  a  central  office  for 
communication  to  the  public  of  patents,  industrial  designs  or  models, 
and  trademarks. 

Article  XIII. 

An  international  office  shall  be  organized  under  the  name  of  "Bureau 
International  de  I'Union  pour  la  Protection  de  la  Propriete  Industri- 
elle"  (International  Office  of  the  Union  for  the  Protection  of  Industrial 
Property). 

This  office,  the  expense  of  which  shall  be  defrayed  by  the  govern- 
ments of  all  the  contracting  states,  shall  be  placed  under  the  high 
authority  of  the  Central  Administration  of  the  Swiss  Confederation, 
and  shall  work  under  its  supervision.  Its  functions  shall  be  determined 
by  agreement  between  the  states  of  the  union. 

Article  XIV. 

The  present  convention  shall  be  submitted  to  periodical  revisions, 
with  a  view  to  introducing  improvements  calculated  to  perfect  the 
system  of  the  union. 

To  this  end  conferences  shall  be  successively  held  in  one  of  the  con- 
tracting states  by  delegates  of  the  said  states.  The  next  meeting  shall 
take  place  in  1885  at  Rome. 


INTERNATIONAL    ARRANGEMENTS.  801 

Abticle  XV. 

It  Is  agreed  that  the  high  contracting  parties  respectively  reserve  to 
themselves  the  right  to  make  separately,  as  between  themselves,  special 
arrangements  for  the  protection  of  industrial  property,  in  so  far  as 
such  arrangements  do  not  contravene  the  provisions  of  the  present  con- 
vention. 

Abticle  XVI. 

States  which  have  not  taken  part  in  the  present  convention  shall  be 
permitted  to  adhere  to  it  at  their  request. 

Such  adhesion  shall  be  notified  officially  through  the  diplomatic  chan- 
nel to  the  government  of  the  Swiss  Confederation,  and  by  the  latter 
to  all  the  others.  It  shall  imply  complete  accession  to  all  the  clauses 
Bfnd  admission  to  all  the  advantages  stipulated  by  the  present  conven- 
tion. 

Article  XVTI. 

The  execution  of  the  reciprocal  engagements  contained  in  the  present 
convention  is  subordinated,  in  so  far  as  necessary,  to  the  observance  of 
the  formalities  and  rules  established  by  the  constitutional  laws  of  those 
of  the  high  contracting  parties  who  are  bound  to  procure  the  applica- 
tion of  the  same,  which  they  engage  to  do  with  as  little  delay  as  pos- 
sible. 

Abticle  XVIII. 

The  present  convention  shall  come  into  operation  one  month  after 
the  exchange  of  ratifications,  and  shall  remain  in  force  for  an  unlimited 
time,  till  the  expiry  of  one  year  from  the  date  of  its  denunciation.  This 
denunciation  shall  be  addressed  to  the  government  commissioned  to 
receive  adhesions.  It  shall  only  affect  the  denouncing  state,  the  con' 
vention  remaining  in  operation  as  regards  the  other  contracting  parties. 

Abticle  XIX. 

The  present  connvention  shall  be  ratified,  and  the  ratifications  ex> 
changed  in  Paris,  within  one  year  at  the  latest. 

In  witness  whereof  the  respective  plenipotentiaries  have  signed  the 
same,  and  have  affixed  thereto  their  seals. 

Dated  at  Paris  the  20th  March.  1883. 

(Signed  by  the  Plenipotentiaries.) 


FINAL  PROTOCOL. 

(Official  Translation.) 

On  proceeding  to  the  signature  of  the  convention  concluded  this  day 
between  the  governments  of  Belgium,  Brazil.  Spain,  France,  Guatemala. 
Italy,  the  Netherlands,  Portugal.  Salvador.  Servia  and  Switzerland,  for 
the  protection  of  industrial  property,  the  undersigned  plenipotentiaries 
have  agreed  as  follows: 
51 


802  APPENDIX  N. 

1.  The  words  "industrial  property"  are  to  be  understood  in  their 
broadest  sense;  they  are  not  to  apply  simply  to  industrial  products 
properly  so  called,  but  also  to  agricultural  products  (wines,  corn,  fruits, 
cattle,  etc.),  and  to  mineral  products  employed  in  commerce  (mineral 
waters,  etc.). 

2.  (Relates  only  to  patents.) 

3.  The  last  paragraph  of  article  II  does  not  affect  the  legislation  of 
each  of  the  contracting  states,  as  regards  the  procedure  to  be  followed 
before  the  tribunals,  and  the  competence  of  those  tribunals. 

4.  Paragraph  1  of  article  VI  is  to  be  understood  as  meaning  that  no 
trademark  shall  be  excluded  from  protection  in  any  state  of  the  union, 
from  the  fact  alone  that  it  does  not  satisfy,  in  regard  to  the  signs  com- 
posing it,  the  conditions  of  the  legislation  of  that  state;  provided  that 
on  this  point  it  comply  with  the  legislation  of  the  country  of  origin, 
and  that  it  had  been  properly  registered  in  said  country  of  origin. 
With  this  exception,  which  relates  only  to  the  form  of  the  mark,  and 
under  reserve  of  the  provisions  of  the  other  articles  of  the  convention, 
the  internal  legislation  of  each  state  remains  in  force. 

To  avoid  misconstruction,  it  is  agreed  that  the  use  of  public  armor- 
ial bearings  and  decorations  may  be  considered  as  being  contrary  to 
public  order  in  the  sense  of  the  last  paragraph  of  article  VI. 

5.  The  organization  of  the  special  department  for  industrial  prop- 
erty mentioned  in  article  XII  shall  comprise,  so  far  as  possible,  the 
publication  in  each  state  of  a  periodical  official  paper. 

6.  [After  providing  for  the  common  expenses  of  the  international 
oflBce,  continues:] 

The  Swiss  government  will  superintend  the  expenses  of  the  inter- 
national office,  advance  the  necessary  funds,  and  render  an  annual 
account,  which  will  be  communicated  to  all  the  other  administrations. 

The  international  office  will  centralize  information  of  every  kind 
relating  to  the  protection  of  industrial  property,  and  will  bring  it  to- 
gether in  the  form  of  a  general  statistical  statement,  which  will  be  dis- 
tributed to  all  the  administrations.  It  will  interest  itself  in  all  matters 
of  common  utility  to  the  union,  and  will  edit,  with  the  help  of  the  docu- 
ments supplied  to  it  by  the  various  administrations,  a  periodical  paper 
in  the  French  language  dealing  with  questions  regarding  the  object  of 
the  union. 

The  numbers  of  this  paper,  as  well  as  all  the  documents  published 
by  the  international  office,  will  be  circulated  among  the  administra- 
tions of  the  states  of  the  union  in  the  proportion  of  the  number  of  con- 
tributing units  as  mentioned  above.  Such  further  copies  as  may  be 
desired  either  by  the  said  administrations,  or  by  societies  or  private 
persons,  will  be  paid  for  separately. 

The  international  office  shall  at  all  times  hold  itself  at  the  service  of 
members  of  the  union,  in  order  to  supply  them  with  any  special  infor- 
mation they  may  need  on  questions  relating  to  the  internal  system  of 
industrial  property. 

The  administration  of  the  country  in  which  the  next  conference  is 


INTERNATIONAL    ARRANGEMENTS.  803 

to  be  held  will  make  preparation  for  the  transactions  of  the  conference, 
with  the  assistance  of  the  international  office. 

The  director  of  the  international  office  will  be  present  at  the  meetings 
of  the  conferences,  and  will  take  part  in  the  discussions,  but  without 
the  privilege  of  voting. 

He  will  furnish  an  annual  report  upon  his  administration  of  the 
office,  which  shall  be  communicated  to  all  the  members  of  the  union. 

The  official  language  of  the  international  office  will  be  French. 

7.  The  present  final  protocol,  which  shall  be  ratified  together  with 
the  convention  concluded  this  day,  shall  be  considered  as  forming  an 
integral  part  of.  and  shall  have  the  same  force,  validity,  and  duration 
as,  the  said  convention. 

In  witness  whereof  the  undersigned  plenipotentiaries  have  drawn  up 
the  present  protocol. 

(Signed  by  the  Plenipotentiaries.) 


ACCESSION    OF    GREAT    BRITAIN    AND    IRELAND 
TO  THE  CONVENTION. 

The  undersigned,  ambassador  extraordinary  and  plenipotentiary  of 
Her  Majesty  the  Queen  of  the  United  Kingdom  of  Great  Britain  and 
Ireland  to  the  French  Republic,  declares  that  her  Britannic  Majesty, 
having  had  the  International  Convention  for  the  Protection  of  Indus- 
trial Property,  concluded  at  Paris  on  the  20th  March,  1883,  and  the 
protocol  relating  thereto,  signed  on  the  same  date,  laid  before  her,  and 
availing  herself  of  the  right  reserved  by  article  XVI  of  that  convention 
to  states  not  parties  to  the  original  convention,  accedes,  on  behalf  of 
the  United  Kingdom  of  Great  Britain  and  Ireland,  to  the  said  inter- 
national convention  for  the  protection  of  industrial  property,  and  to 
the  said  protocol,  which  are  to  be  considered  as  inserted  word  for  word 
in  the  present  declaration,  and  formally  engages,  as  far  as  regards  the 
President  of  the  French  Republic  and  the  other  high  contracting  par- 
ties, to  co-operate  en  her  part  in  the  execution  of  the  stipulations  con- 
tained in  the  convention  and  protocol  aforesaid. 

The  undersigned  makes  this  declaration  on  the  part  of  Her  Britannic 
Majesty,  with  the  express  understanding  that  power  is  reserved  to  Her 
Britannic  Majesty  to  accede  to  the  convention  on  behalf  of  the  Isle  of 
Man  and  the  Channel  Islands,  and  any  of  Her  Majesty's  possessions,  on 
due  notice  to  that  effect  being  given  through  Her  Majesty's  government. 

In  witness  whereof  the  undersigned,  duly  authorized,  has  signed  the 
present  declaration  of  accession,  and  has  affixed  thereto  the  seal  of 
his  arms. 

Done  at  Paris,  on  the  17th  day  of  March,  1884. 

(Sigrned)     Lyons. 
[L.  S.] 


804  APPENDIX  N. 


DECLARATION   OF  ACCEPTANCE   OF   ACCESSION  OF 
GREAT   BRITAIN. 

(Official  Translation. J 

Her  Majesty  the  Queen  of  the  United  Kingdom  of  Great  Britain  and 
Ireland,  having  acceded  to  the  International  Convention  relative  to  the 
protection  of  industrial  property,  concluded  at  Paris,  March  20th,  1883, 
together  with  a  protocol  dated  the  same  day,  by  the  declaration  of 
accession  delivered  by  her  ambassador  extraordinary  and  plenipoten- 
tiary to  the  government  of  the  French  Republic;  the  text  of  which 
declaration  is  word  for  word  as  follows: 

[Here  is  inserted  the  text  of  the  declaration  of  accession  <in  English.] 

The  President  of  the  French  Republic  has  authorized  the  under- 
signed, President  of  the  Council,  Minister  for  Foreign  Affairs,  to  form- 
ally accept  the  said  accession,  together  with  the  reserves  which  are  con- 
tained in  it  concerning  the  Isle  of  Man,  the  Channel  Islands,  and  all 
other  possessions  of  Her  Britannic  Majesty,  engaging  as  well  in  his  own 
name  as  in  that  of  the  other  high  contracting  parties  to  assist  in  the 
accomplishments  of  the  obligations  stipulated  in  the  convention  and  the 
protocol  thereto  annexed,  which  may  concern  the  United  Kingdom  of 
Great  Britain  and  Ireland. 

It  witness  whereof  the  undersigned,  duly  authorized,  has  drawn  up 
the  present  declaration  of  acceptance  and  has  affixed  thereto  his  seal. 

Done  at  Paris,  the  2d  April,  1884. 

(Signed)     Jules  Ferry. 

[L.  S.] 

This  convention  is  not  self-executing,  but  requires  legislation  to  make 
it  effective  in  the  United  States.  Opinion  of  Miller,  Attorney-General, 
47  Off.  Gaz.  397;   Ex  parte  Zwack  &  Co.,  73  Off.  Gaz.  1855. 

For  a  list  of  the  existing  treaties  and  conventions  between  the  United 
States  and  foreign  nations  see  post,  p.  807. 


APPENDIX  O. 

Section  4  of  the  Act  of  January  5,  1905,  incorporating 
the  American  National  Red  Cross,  is  as  follows: 

Sec.  4.  That  from  and  after  the  passage  of  this  Act 
it  shall  be  unlawful  for  any  person  within  the  jurisdic- 
tion of  the  United  States  to  falsely  and  fraudulently  hold 
himself  out  as,  or  represent  or  pretend  himself  to  be,  a 
member  of,  or  an  agent  for,  the  American  National  Red 
Cross,  for  the  purjDOse  of  soliciting,  collecting,  or  receiv- 
ing money  or  material ;  or  for  any  person  to  wear  or  dis- 
play the  sign  of  the  Red  Cross,  or  any  insignia  colored 
in  imitation  thereof  for  the  fraudulent  purpose  of  induc- 
ing the  belief  that  he  is  a  member  of,  or  an  agent  for,  the 
American  National  Red  Cross.  Nor  shall  it  be  lawful  for 
any  person  or  corporation,  other  than  the  Red  Cross  of 
America,  not  now  lawfully  entitled  to  use  the  sign  of  the 
Red  Cross,  hereafter  to  use  such  sign  or  any  insignia  col- 
ored in  imitation  thereof  for  the  purposes  of  trade  or  as 
an  advertisement  to  induce  the  sale  of  any  article  what- 
soever. If  any  person  violates  the  provisions  of  this  sec- 
tion, he  shall  be  guilty  of  a  misdemeanor  and  shall  be 
liable  to  a  fine  of  not  less  than  one  nor  more  than  five 
hundred  dollars,  or  imprisonment  for  a  tenn  not  exceed- 
ing one  year,  or  both,  for  each  and  every  offense.  The 
fine  so  collected  shall  be  paid  to  the  American  National 
Red  Cross. 

******  1^ 

Approved,  January  5,  1905. 


805 


APPENDIX   P. 


The  trademark  laws  of  several  of  the  foreign  nations 

have  been  published  from  time  to  time  in  the  Official 
Gazette  of  the  Patent  Office.  The  references  are  to  the 
volume  and  page  of  that  publication. 

COUNTRY.                                       VOLUME.     PAGE.  DATE. 

A^rgentine   Republic    42  383  Jan.  24,  1888 

Austria-Hungary    52  1539  Sept.  2,  1890 

Do    , 59  1611  June  14,1892 

Bulgaria 65  137  Oct.  3,  1893 

Brazil    45  235  Oct.  9,  1888 

China    112  2095  Oct.  25,  1904 

Cuba    ^.100  1114  July  29,1902 

Do    108  800  Jan.  19,  1904 

Denmark    54  1419  Mar.  10,  1891 

Ecuador    ^.93  361  Oct.  9,  1900 

England    25  90  Oct.  2,  1883 

Do    46  1395  Mar.  12,  1889 

Germany    31  1447  June  23,  1885 

Do    71  145  Apr.  2,  1895 

Greece   69  126  Oct.  2,  1894 

Guatemala   93  360  Oct.  9,  1900 

Italy 24  102  July  3,1883 

Japan    48  1402  Sept.  3,  1889 

Do    70  1503  Mar.  12,  1895 

Do    78  1744  Mar.  16.1897 

Do    83  598  Apr.  26,  1898 

Do    88  1899  Sept.  5,  1899 

Mexico    51  809  May  6,  1890 

Netherlands    23  1334  Apr.  3,  1883 

Do    66  174  Jan.  2,  1894 

Do    66  321  Jan.  16,  1894 

Panama    115  1852  Apr.  18,1905 

Portugal    70  279  Jan.  8,1895 

Roumania    ^55  1653  June  23,1891 

Servia    75  1035  May  12,1896 

Switzerland    23  2237  June  5,  1883 

Transvaal   (British)    101  3110  Dec.  30,  1902 

Victoria   33  501  Oct.  27,  1885 


806 


APPENDIX  Q. 

The  United  States  has  entered  into  conventions  with 
the  several  governments  named  below  for  the  reci];jrocal 
registration  of  trademarks  of  citizens  of,  or  persons  domi- 
ciled in  the  respective  countries. 


Country. 

Date  Proclaimed. 

Ki;i»(JUTEO. 

Austria-Hungary 

June    1,   1872. 

17  Stat,  at  L.  917,  2 
Off.  Gaz.   418. 

Belgium   (now  obsolete) 

July  30/1869. 

16  Stat,  at  L.  765. 

Belgium 

July  9,   1884. 

29  Off.  Gaz.  452. 

Brazil 

June  17,  1889. 

21  Stat,  at  L.  659. 

Denmark 

Oct.   12,  1892. 

61  Off.  Gaz.   571. 

France 

July   6,   1869. 

16  Stat,  at  L.  771,  2 
Off.  Gaz.  416. 

Germany- 

June  1,   1872. 

17  Stat,  at  L.  921,  2 
Off.   Gaz.   418. 

Great  Britain 

July  17,  1878. 

14  Off.   Gaz.  233. 

Italy 

March  19.   1884. 

27  Off.  Gaz.  304. 

Japan 

March  9,  1897. 

78  Off.  Gaz.   1744. 

Luxemburg 

March  15,  1905. 

115  Off.  Gaz.  1332. 

Netherlands 

Feb.   16,   1883. 

23   Off.   Gaz.    1334. 

Russia 

Oct.   15,   1868. 

16  Stat,  at  L.  725,  2 
Off.   Gaz.   416. 

Russia 

Nov.  28,  1874. 

Revision  Committee 
Report,    p.    336. 

Servia 

Dec.   27,  1882. 

22  Stat,  at  L.  966,  28 
Off.   Gaz.   1191. 

Spain 

April    19.   1883. 

25  Off.   Gaz.   98. 

Switzerland 

May  16,   1883. 

23  Off.  Gaz.  2237. 

807 


INDEX. 


References  are  to  pages. 


"ABACUS,"  283. 

ABANDONMENT— 

a  question  of  intent,  176. 

burden  of  proof  in  establishing,  177. 

by  adoption  of  new  brand  or  label,  181. 

by  advertisement  of  sales  agent,  182. 

by  dismissing  bill  for  injunction,  177,  183. 

by  limited  registration,  183. 

by   owner,   will    not   confer   title    on   another   fraudulently    using 

mark,  177. 
by  permitting  infringements,  183. 
by  removal  from  premises,  178. 
by  retiring  partner,  32. 
defense  of,  not  favored  by  courts,  176. 
involuntary,  180. 

of  features  of  mark  not  registered,  183. 
of  mark  owned  jointly  by  independent  dealers,  by  termination  of 

joint  business,  27. 
proof  of  intention  of,  183. 
terminates  trademark  right,  18,  176. 

ABORIGINAL  WORDS— 

as  trademarks,  116. 
"A.   C.  A."    (cloth),  87,  298. 

ACCIDENTAL  ADOPTION,  58. 

ACCOUNT— 

pending  the  suit,   may   be  ordered   where  preliminary  injunction 
refused,  380. 

ACCOUNTING?— 

credits  upon,  385. 

denied  where  defendant  ignorant  of  plaintiff's  mark,  271. 
plaintiff   entitled    to    reference   for,    as   mater   of   right,   when   In- 
fringement confessed  or  proven,  381. 
refused  because  of  acquiescence,  175. 
refused  because  of  laches,  172,  372. 

809 


810  INDEX. 

References  are  to  pages. 

"ACID  PHOSPHATE,"  87,  109. 
ACQUIESCENCE— 

a  bar  to  relief  against  unfair  competition,  174. 

always  question  of  fact,  174. 

cannot  be  inferred,  175. 

distinguished   from  laches,   174. 

is  revocable,  175. 

may  bar  right  to  accounting,  175. 

no  bar  to  injunction,  175. 

none  without  knowledge  of  facts,  176. 

tantamount  to  agreement,  174. 
ACQUISITION— 

by  assignment,  61. 

of  trademark,  generally,  61. 
ACTION   (see  Action  At  Law;    Suits  in  Equity)  — 

forms  of,  347. 

for  trademark  and  copyright  infringement,  may  be  joined,  340. 

for  trademark  and  patent  infringement,  may  be  joined,  340. 

failure  to   prosecute  may  effect  abandonment  of  trademark,   177, 
183. 

for  infringement  survives  owner's  death,  335. 

for  invasion  of  goodwill,  212. 
ACTION  AT  LAW— 

declaration  in,  349. 

generally,  347. 

trespass  on  the  case,  347. 

continuando  must  be  pleaded  in,  352. 

form   of   declaration,   746. 

ACT  OP  1870— 

in  full,  411. 
ACT  OF  1874,  424. 
ACT  OF  1876,  442. 

void   because  Act  of  1870  invalid,  445. 

no  conviction  under,  in  absence  of  recital  of  exclusive  ownership 
in  certificate,  445,  n.  1. 

not  revived  by  act  of  1881,  445,  n.  1. 
ACT  OF  1881— 

in  full,  446. 

did  not  make  act  of  1876  operative,  445,  n.  1. 

requirements  of  registration  under,  446,  n.  3. 

validity  of,  446,  n.  1. 
ACT  OF  AUGUST  5,  1882,  463. 
ACT  OF  1897,   466. 
ACT  OF  FEBRUARY  20,   1905,  468. 


INDEX.  811 

References  are  to  pages. 

ADDED   MATTER— 

in  use  of  false  mark,  no  defense,  290. 

may  tend  to  mitigate  damages,  290. 
"ADJECTIVES  OF  THE  LANGUAGE,"  may  be  Instruments  of  fraud, 

39,  n.  17. 
ADMINISTRATION— 

upon  trademark,  28. 

of  good-will,  28. 

trademarks  of  deceased  person  should  be  conveyed  by,  28. 

may  pass  without,  28,  29,  n.  75. 
ADMINISTRATOR— 

as  plaintiff  in  suit  for  infringement,  335. 
ADOPTION— 

actual  adoption  of  trademark  indispensable,  64. 

advertising  mark  is  not,  64. 

date  of,  stated   in  application,  not  conclusive,  325. 

priority  of,  not  conclusive,  64,  65. 
ADVERTISEMENT— 

dishonest,  deprives  user  of  equitable  relief,  66. 

misleading,  when  restrained,  278,  303. 

not  a  trademark,  243. 

of  fact  of  assignment,  71. 
ADVERTISING— 

an  element  of  goodwill,  278. 

as  assets,  251. 

mere  use  of  mark  in,  does  not  create  trademark  right,  59. 
ADVERTISING   SOLICITOR— 

enjoined  from  using  material  for  rival  publication,  224. 
"^TNA  IRON  WORKS"  CASE,  155. 
AFFIDAVITS— 

ex  parte,  insufficient  as  basis  of  preliminary  injunction  except  in 
clear  case,  400. 

in   chief,   in   application    for   preliminary   injunction,   must   estab- 
lish all  necessary  facts,  400. 

must  be  entitled  in  the  cause,  401. 

proceeding  by,  on  application  for  preliminary  injunction,  401. 
AFFIXING— 

mode  of,  immaterial,  7,  58. 
"A.  G.."  299. 
AGENT— 

goodwill  of,  188.  189. 

liability  of,  for  handling  infringing  goods.  337,  338. 

act  done  at  suggestion  of  plaintiff's,  not  an  infringement,  368. 

upon  determination  of  his  employment  enjoined  from  using  word 
"Agency"  upon  his  signs,  303. 


812  INDEX. 

References  are  to  pages. 

AGREEMENTS  UPON  DISSOLUTION— 

how  interpreted,  199,  n.  85. 
"AINS WORTH"    (thread),  96,  137. 
"AIR-CELL,"  379,  n.  86. 

ALABAMA  TRADEMARK  STATUTES,  515. 
ALASKA  TRADEMARK  STATUTES,  515. 
"ALBA,"  283. 

"ALBANY  BEEF,"  455,  n.  24. 
"ALLCOCK'S   POROUS  PLASTERS,"  87. 
"ALDERNEY"   (oleomargarine),  96,  135. 

ALIEN— 

abandoning  mark   in  United   States,   acquires   no  right  by  subse- 
quent legislation  in  his  own  country,  19,  n.  40. 

acquisition  of  trademark  by,  62. 

cannot  have  trademark   right  as  against  a  citizen  making  prior 
adoption  in  good  faith,  62. 

might  register  under  act  of  1881,  450,  n.  11. 

need  not  aver  that  mark  is   used   in  foreign  commerce,  to  come 
within  federal  jurisdiction,  461,  n.  39. 

trademark  rights  of,  62. 
ALTERNATIVES— 

registration  of,   292. 

what  may  be  registered  as,  292. 
"ALUMINUM"   (washboards),  87. 
AMBIGUITY— 

as  a  defense,  292. 
"AMERICAN"    (sardines),  87. 
"AMERICAN  COLD  JAPAN"    (paint),  96. 
"AMERICAN  EXPRESS"   (sealing  wax),  96. 
"AMERICAN  VOLUNTEER"    (shoes),   96. 
"AMMONIATED  BONE  SUPERPHOSPHATE  OF  LIME,"  87. 

AMOUNT  IN  controversy- 
Is  value  of  trademark,  460,  n.  35. 

in  suit  to  restrain  vendor  of  goodwill  from  re-engaging  in  busi- 
ness, 217. 

ANALOGY— 

value  of,  in  determining  character  of  infringement,  294. 

"ANATOLIA"   (licorice),  96. 

"ANCHOR  BRAND"    (wire),   96. 

"ANGLO-PORTUGO"    (oysters),  87. 

"ANGOSTURA"  (bitters),  71. 

"A.  N.  HOXIE'S  MINERAL"    (soap),  96. 


INDEX.  813 

References  are  to  pages. 
"ANNIHILATOR"   (medicine),  96. 
"ANSATZ"   (bitters),  118. 
ANSWER— 

form  of,  781,  784. 
ANTICIPATION— 

what  constitutes,  457,  n.  27. 
"ANTIQUARIAN"    (book  store),  88. 
"ANTI-WASHBOARD"    (soap),   96. 
"ANVIL,"  283. 
"APOLLINARIS,"  96,  283. 
APPEAL,   388. 

APPENDANT,  TRADEMARK  RIGHT  MUST  BE,  20. 
"APPLE  AND  HONEY"    (medicine),  88. 
APPLICATION— 

what  is  sufficient,  of  mark,  452,  n.  15. 
ARKANSAS,  TRADEMARK  STATUTES,  518. 
ARTICLE  OF  MANUFACTURE,  DEFINED,  427. 
"ASBESTOS"  (wall  plaster),  88. 

"ASSETS   AND   GOODWILL"— 

sale  of  conveys  trademarks,  25,  n.  62. 

ASSIGNMENT— 

assignability  of  trademarks,  generally,  61. 

assignee  acquires  trademark  subject  to  necessity  of  continued 
user,  32. 

assignee  must  publish  fact  of  assignment,  when,  71. 

assignee  can  apply  trademark  only  to  same  class  of  goods  as 
assignor,  31. 

assignor  may  be  enjoined  from  use  of  mark,  31. 

general,  in  insolvency,  conveys  trademarks  without  special  men- 
tion, 25. 

general,  of  business,  conveys  trademarks  without  special  men- 
tion, 25. 

limited  to  specified  territory,  20. 

of  mark  applied  to  the  product  of  a  secret  process,  34. 

of  mark  containing  name  and  portrait  of  former  owner,  24,  n.  59. 

of  right  to  use  one's  own  name,  146. 

of  right  to  use  proper  name  cannot  be  reassigned,  211,  n.  33. 

of  trademark  by  implication,  178. 

right  of  assignee  of  trademark  to  use  name  of  assignor,  72. 

ASSIGNOR— 

enjoined  from  using  his  assigned  name,  148. 

"ASTRAL"  (oil),  88. 


814  INDEX. 

References  are  to  pages. 
ATTACHMENT— 

action  for  damages  for  injury  to  goodwill  througli  wrongful,  215. 
ATTORNEY— 

goodwill  of,  189. 

"ATWOOD'S    GENUINE    PHYSICAL   JAUNDICE    BITTERS,"    71. 
AUTOGRAPHIC  SIGNATURE— 

misleading  use  of,  enjoined,  304. 
"A-V-H"   (gin),  88. 

B 

"BABBITT'S  BEST"    (soap),  10. 
"BACCO-CURO"    (remedy),  97. 
"BAFFLE"    (safes),  97. 
BAILEE— 

of  infringing  goods,  duty  of  to  make  discovery,  339. 

of  infringing  goods,  liable  to  injunction,  339. 
BAKER— 

goodwill  of,  188. 

"BALM  OF  THOUSAND  FLOWERS"   (cosmetic),  69,  88,  97. 
BANKER— 

goodwill  of,  188. 
BANKRUPTCY— 

trademarks  in,  25,  n.  63,  321. 
"BARBERS  MODEL"    (razors),  88. 
"BAZAAR"    (patterns),   88. 
"B.  B.  B.,"  97,  299. 
"B.  B.  H."    (iron),  97,  299. 
"BEATTY'S   HEADLINE"    (copy-book),  97. 
"BELL  OF  MOSCOW"   (wine),  97. 
"BELL'S  LIFE"  CASE,  164. 
"BENEDICTINE"    (liqueur),  97. 
BEQUEST— 

of  trademark,  26. 
"BETHESDA"    (water),  97. 

"BETTER  THAN  MOTHER'S"    (mince  meat),  88. 
"BHE  HATHI,"  281. 
BIBLIOGRAPHY,  797. 
BILL  IN  EQUITY,  364. 
orderly  parts  of,  364. 

1.  Title  of  court,  364. 

2.  Introduction,  364. 


INDEX.  815 

References  are  to  pages. 

BILL   IN  EQUITY— Continued. 

3.  Statement,  364. 

4.  Prayer  for  relief,   366. 

5.  Interrogating  part,  367. 

6.  Prayer  for  process,  367. 
averments  of  citizenship  of  parties,  364. 

defect  on  face  of,  must  be  met  by  demurrer  and  not  by  plea,  372. 
form  of  interrogatories,  754. 

form  of,  trademark   infringement,  749,  760,  767,  772,  778. 
form  of,  unfair  competition,  755. 
need  not  be  verified,  when,  367. 

not  demurrable  because  praying  for  both  profits  and  damages,  363. 
should   show   application   of   mark   in   foreign   or   interstate   com- 
merce, 365. 
to  restrain  dealing  in  fraudulent  labels,  366. 
to  restrain  disclosure  of  secret  process,  219. 
to  restrain   unfair  competition,  366. 

"BISMARCK"    (collars),  97,  139. 
"BLACK  DIAMOND,"   283. 
"BLACK  PACKAGE"    (tea),  88. 
"BLACKSTONE"    (cigars),   97. 
"BLOOD  SEARCHER"   (medicine),  97. 
"BLUE   LICK   WATER,"   97. 
"BOKER'S  STOMACH  BITTERS,"  97. 
"BOKOL"    (beer),  115. 
BOND— 

on  preliminary  injunction,  381. 
BOOK— 

device  of,  not  trademark,  88. 

title  of,  as  trademark,  162. 
BOOKS  AND  PAPERS— 

discovery  and   inspection  of,  396. 
"BOOTH'S  THEATRE"  CASE,  146. 
"BORAX"   (soap),  88. 

BOTTLES— 

distinctive,  protected,  250. 
refilling  enjoined,  273. 

"BOVILENE,"   97.    283. 

"BOVRIL"    (meat  extract),  97. 

BOXES— 

injunction  against  competitor   buying,   260. 

"BRAIDED  FIXED  STARS"   (cigar  lights),  88. 


816  INDEX. 

References  are  to  pages. 

BREWER— 

goodwill  of,  188. 
"BROMIDIA"    (medicine),   97,   110. 
"BROMO-CAFFEINE,"   97,  110. 
"BROMO   CELERY,"   109. 
"BROMO-QUININE,"  109,  110. 

"B.  T.  BABBITT'S  TRADEMARK  BEST  SOAP,"  291. 
"BUFFALO   PITTS,"  456. 
BULK  GOODS— 

purchaser  of,  cannot  use  manufacturer's  trademark  used  only  on 
his  own  packages,  275. 
BURDEN  OF  PROOF— 

in  establishing  abandonment,  180. 

in  establishing  priority  against   existing  registration,   in   applica- 
tion to  register,  460,  n.  33. 

on  applicant  in  interferences,  458,  n.  29. 

strongly  upon  complainant  in  refilling  cases,  274. 
"BURGESS,"  283. 
"BUSINESS    CONNECTIONS    AND   PATRONAGE"— 

include  goodwill,  194. 


"C.  A.",  335. 

"CACHEMIRE   MILANO"    (cloth),  88. 

CALIFORNIA  TRADEMARK  STATUTES,  523. 

CALIFORNIA  TRADEMARK   FORMS,   529. 

"CALIFORNIA  SYRUP  OF  FIGS"    (laxative),  88. 

"CAMEL  HAIR  BELTING"    (case),  11,   123,  156. 

CANADIAN  ACT,  RULES  AND  FORMS,  729,  741,  742. 

"CANADIAN  CLUB  WHISKEY,"  283. 

CANCELLATION  OF  REGISTRATION,  423,  n.  36. 

"C.  A.  P."    (cream  acid   phosphate),   88. 

CARE— 

degree  of,  expected  of  consumers,  300, 
CARPET  CLEANER— 

marks   of,   446,   n.   3. 
CARRIERS— 

liable  for  infringement,  338. 
"CARROM"    (game-board),   97. 
"CASCARETS"    (carthartic   medicine),   283. 
"CASHMERE   BOUQUET"    (toilet  soap),   97,    283. 


INDEX.  817 

References  are  to  pages. 
"CASTORIA"    (medicine),   88. 
CATALOGUE— 

improper  use  of,  restrained,  226. 
CATCH-WORDS— 

by  wliich  goods  known  to  trade,  how  proven,  39S. 

suggested  by  a  trademark,  protected,  123,  301. 
CAUSES  OF  ACTION— 

joinder  of,  340. 
"CELEBRATED  STOMACH  BITTERS,"  88. 
CELEBRITY— 

name    of,    as    trademark,    139. 

registration  of  name  of,  as  trademark,  239. 
"CELERY   COMPOUND"    (medicine),   97. 
"CELLULAR   CLOTHING"    (case).   11,   88,    124. 
"CELLULOID,"   283. 

"CENTENNIAL"    (clothing,   etc.),   88,   98. 
CERTIFICATE  OF  REGISTRATION— 

how  assigned,  61. 

value  of,  321,  324.  459,  n.  33. 
CERTIORARI— 

generally.  389. 

to  review  contempt  proceedings,  400. 
"SCHAMPION"    (flour),  98. 
"CHARLEY'S  AUNT"    (farce  title),  98. 
"CHARTER   OAK"    (stoves),    98. 
"CHARTREUSE"    (cordial),   34,   283. 
"CHATTERBOX"    (periodical),   21,  98,  283. 
"CHERRY  PECTORAL"    (medicine),  89. 
CHEESEMONGER— 

goodwill    of,    188. 
"CHICAGO  WAISTS"    (corsets),  98. 
"CHICKEN  COCK"    (whiskey),  98,  286. 
"CHILI   COLOROW"    (condiment),  118. 
"CHILL  STOP"    (medicine),  89. 
"CLIMAX"    (stoves),  98. 
"CHINESE   LINIMENT,"   98. 

"CHLORODYNE"    (medicinal    compound).    89,    120. 
"CHRISTY'S  MINSTRELS"    (case),  142.  147. 
CIRCULARS— 

false  representations  in.  deprive  from  relief,  78. 

injunction  against,  when   containing  false  representations,  277. 
52 


818  INDEX. 

References  are  to  pages. 

CITIZENSHIP— 

averment  of,  concerning  corporation,  not  proper,  350. 

defined,  450,  n.  11. 

diverse,  must  be  pleaded   in  federal  practice,  364. 

of  applicant  for  registration,  immaterial,  450. 

what  averments  necessary  in  federal  equity  pleading,  364. 
"CLARK'S   0.   N.  T.",   284. 
CLASSIFICATION— 

of  trademarks,  suggested  by  patent  office,  795. 
CLASS   OP   GOODS— 

must    be    stated    in    registering,    451. 

infringement  must  be  upon  same,  270. 
"CLEAN   HANDS"— 

equitable  rule  as  to,  68. 
"CLIMAX"    (stoves),   98. 
"CLOVERDALE,"  455. 
"CLUB"    (cocktails),  98. 
"CLUB    HOUSE"    (gin),    89. 
"CLUB    SODA,"    98. 

"COAL  OIL  JOHNNY'S  PETROLEUM"   (soap),  98. 
COAT-OF-ARMS— 

not  registrable,  471. 

of  state  or  United   States  not  registrable,  455. 

effect  of  adding,  to  trademark,  375. 
"COCOAINE"  (hair  oil),  98,  110,  284. 
"COCOATINA,"  284. 

"COE'S   SUPERPHOSPHATE  OF  LIME,"   98,  284. 
COLLATERAL   MISREPRESENTATION— 

v^fill   not   debar   mark   from   protection,   68,   72,   n.   22. 
COLLOCATION— 

in   issue   of   fraudulent   use   of   color,   248. 
"COLONIAL,"  293. 
COLOR— 

fraudulent    imitation   of,    243. 

infringement  of,  restrained,  243. 

no   trademark    in,    112,    245. 

not  registrable  as  trademark,   250,  note. 

registration  in,  249. 

COLORABLE  IMITATION— 
of   trademarks. 

COLORADO— 

statutes  and  forms,  530,  534. 


INDEX.  819 

References  are  to  pages. 

COMBINATIONS— 

in   restraint   of   trade,   378. 

of  old  word-elements,  109. 
"COMFORT"  (publication),  98. 
COMMERCE— 

trademark  must  be  used  in,  18. 
COMMERCE    CLAUSE— 

as  basis  of  federal  trademark  legislation,  314. 
"COMMERCIAL  ADVERTISER"    (case),   167. 

COMMISSIONER    OF    PATENTS— (See    Statutes:    Act    of    1905,    and 
Trademark  Rules  of  Patent  Office). 

duties  of,  judicial,  457. 

action  of,  not  controlled  by  mandamus,  457,  n.  28. 

shall  keep  a  record  of  assignments,  476. 

COMMON  LAW— 

right  of  trademark  not  abridged  or  qualified  by  registration  act, 
461,   n.    38. 
COMMON   TO   THE   TRADE— 

resemblance   in  such   particulars  no   infringement,  244. 

words,  not  subject  to  exclusive  appropriation,  106,  107,  111. 
"COMPACTUM"   (umbrellas),  98. 
COMPARISON— 

by  the  court,  final   test  of  resemblance,   391. 

no  opportunity  of,  given  consumer,  as  affecting  test  of  infringe- 
ment, 263. 
"COMPUTING"    (scales),  89. 

"CONCURRENCE    DELOYALE,"    French    equivalent   for   unfair   com- 
petition, 44. 
CONFUSION— 

of  business  as  evidence  of  right  to  relief,  150,  308. 

"CONGRESS    WATER,"    98,    129. 
CONNECTICUT— 

statutes    and    forms,    535,    537. 

CONSTRUCTION— 

of  contracts  aiTecting  trade  secrets. 

CONTEMPTS— 

action  upon,  not  reviewed  on  appeal,  400. 

by  circulating  matter  prejudicial  to  defense,  398. 

by  offering  infringing  goods  for  sale,  though  no  sale  effected,  398. 

by  publishing  perverted  construction  of  injunction,  398. 

by   violation   of  decree,   398. 

costs  of  unsuccessful  motion  to  commit,  407. 

costs  upon  appeal,  406. 


820  INDEX. 

References  are  to  pages. 

CONTEMPTS— Continued. 

enlarging  decree  on  hearing,  399. 

erroneous  action  upon,  reached  by  certiorari,  400. 

in  disobeying  subpoena,  229. 

intent  of  contemnor,  immaterial,  398. 
"CONTINENTAL"    (fire  insurance  corporation),  89,  153. 
CONTINUANDO— 

must  be  pleaded  in  action  at  law,  352. 
CONTINUITY— 

of  use,  trademark  right  dependant  on,  18. 
CONTRACTS— 

in  reference  to  trade  secrets,  219. 

how    construed,    227. 

in    restraint   of    trade,    201. 

for  sale  of  goodwill,  201. 

not  to  disclose  trade  secret,  implied  as  between  master  and  ser- 
vant, 223. 
CONTRACTS    AFFECTING    USE    OF    TRADEMARK    (See    Statutes: 
Acts  of  1881  and  1905)  — 

not  amounting  to  transfer  or  assignment,  cannot  be  registered, 
462,   n.    40. 

"COPENHAGEN"    (snuff),   89. 

COPYRIGHTS— 

action  for  infringing,  joinder  of,  340. 

distinguished  from  trademarks,  14. 

"CORONA,"    284. 

CORPORATE    NAMES— 
as  trademarks,   150. 
fraudulent,    enjoined,    145. 

governed   by  same  principles   as   names  of   partnerships   and    in- 
dividuals, 154. 
registrable,  when,  456,  n.   25. 

CORPORATION— 

cannot  acquire  right  to  use  proper  name  in  unfair  competition,  155. 

cannot  be  a  citizen,  350. 

creation  of,  no  defense  to  infringement  by  incorporators,  374. 

goodwill   of,    192. 

having  common  interest,   may  join  as  plaintiff. 

injunction  may  issue  against  all  persons  connected  with  infring- 
ing, 207. 

jurisdiction  of  federal  courts  in  suits   against,   350. 

may  hold  trademarks,   55. 

restraint  of,  from  improper  use  of  proper  name  in  corporate 
name,  155. 


INDEX.  821 

References  are  to  pages. 

CORPORATION— Continued. 

stock    issued    for    goodwill,    192. 

transfer  of  goodwill  of,  193. 
COSTS— 

as   against   innocent   warehouseman,  405. 

as  against  retailer,  3(i9. 

awarded  bailee  who  has  made  discovery,  405. 

caused  by  unfounded  charge  in  bill,  406. 

generally,   402. 

in  unsuccessful   motion  to  commit  for  contempt,  407. 

may    be   adjudged   on    interlocutory    decree,    407. 

may    be    allowed    where    damages    refused,    402. 

on  appeal,  when  decree   reversed   in  part,   406. 

on    interlocutory  decree,   407. 

pleading  to  avoid,  369. 

refused  as  against  retail  dealer,  369. 

refused  as  against  label  manufacturer  acting  ignorantly,  369. 

refused  because  of  delay,  406. 

refused   successful    defendant,   when,   404. 

subject  to  prior  lien  of  wharfinger's  charges,  405. 

upon   appeal   from   committal   for  contempt,   406. 

usually  follow  the  event,  402. 

want  of  notice,  no  defense  to  recovery  of,  402. 

where  sales  too  small  to  justify  accounting,  405. 

"COTTOLENE,"   98,  182.   284. 
"COUGH    CHERRIES"    (confectionery),  98. 
"COUGH   REMEDY,"   89. 
COUNTERFEITING — 

trademarks,   260. 

infringement    by,   2G0. 

COURTS— 

jurisdiction  of,  in  cases  of  unfair  competition,  46. 

COVENANTS 

not  to  re-engage,  197,   199,  200,   202,   208. 

"CRACK  PROOF"    (rubber),  89. 
"CRAMP  CURE,"   89. 
"CREAM"    (baking  powder),  89,  99. 
CREDITS  ON  ACCOUNTING,  385. 
"CBESYLIC"    (ointment),    89. 
CRIMINAJ.    PROSECUTION— 

for    traderna'-y    infringement.    344. 
"CRISTALLINE,"    455. 
"CROMARTY."   455. 


822  INDEX. 

References  are  to  pages. 

CROSS-BILL— 

necessary  where  affirmative  relief  sought  by  a  defendant,  368. 

"CROUP  TINCTURE,"  89. 
"CROWN  SEIXO"    (case),  28L 
"CRYSTALLIZED  EGG,"  89. 
"CUPOLA,"    284. 

.CUSTOMERS'  BRANDS,  182,  n.  51. 
"CUTICURA,"  99,  282. 
"CYCLOPS  MACHINE  WORKS,"  284. 
"CYLINDER"   (glass)   89. 

CYPHER  CODE— 

improper  use  of,   when  restrained,  226. 

D 

DAMAGES— 

amount  of,  does  not  fix  jurisdiction  of  federal  courts  in  trade- 
mark cases,  329. 

and   profits  both  assessed   in  equity,   382. 

awarded  in  equity  where  no  loss  of  profit  shown,  384. 

counsel  fees  as  an  element,  384. 

election  between,  and  profits,  in  English  practice,  382. 

for  invasion  of  goodwill,  195,  212. 

in  actions  at  law,  355. 

in  cases  of  unfair  competition  only  where  intentional  fraud,  382. 

increasing,  under  Act  of  1905,  351,  385. 

jury  may  make  interferences  as  to,  from  all  the  evidence,  358. 

loss  of  sales  as  an  element  of,  358,  359,  383. 

may  be  mitigated  by  showing  matter  added  to  mark  in  use,  290. 

nominal,  in  actions  at  law,  358. 

plaintiff  must  elect  between,  and  profits,  under  English  practice, 
382. 

punitive,  cannot  be  assessed  in  equity,  384. 

punitive  may  be  recovered  at  law,  355. 

punitive,  only  where  fraudulent  intent  shown,  356. 

punitive  or  exemplary,  where  may  be  allowed  where  no  actual 
damage  proven,  at  law,  358,  note. 

"DAY  &  MARTIN,"  4L 

DEAD  LANGUAGES— 

trademarks  consisting  of  words  from,  114. 
words  from,  may  be  used  as  trademark,  when,  114. 

DEALER— 

goodwill  of,  188,   189.  ' 


INDEX.  823 

References  are  to  pages. 

DEALER— Continued. 

purchasing     infringing     goods     from     manufacturer,     injunction 
against,   377. 

in   fraudulent   labels,  259. 
DECEIT— 

action  of,   by  defrauded   purchaser,  340. 
DECEPTION— 

doubt  as  to,  resolved  in  favor  of  complainant,  268.  »    i 

need  not  be  shown,  when,  271. 

probability  of,  as  test  of  infringement,  253. 

proof  of,  when  necessary,  253. 
DECEPTIVE    MARKS— 

not  registrable,  455,  n.  24. 
DECLARATION    (see    Forms)  — 

in  action  of  trespass,  349. 
DECREE— 

directing  defendant  how  to  use  a  proper  name,  386. 

directory,   generally,  386. 
DEFENDANT    (See  Parties  Defendant)  — 

unsuccessfully  attaching  plaintiff's  title  is  wanton  trespasser,  372. 

DEFENSES— 

abandonment,  176. 

action  at  law  better  susceptible  of  defense  than  suit  in  equity,  354. 
acquiesence,   174. 

added  matter  used  with  infringing  mark,  ineffective,  290,  378. 
adverse  adjudication  in  a  foreign  country,  378. 
attacking   plaintiff's   right   to   sue,   353. 
denying,    infringement,   354. 
equality  of  quality  no  defense,  294. 
estoppel,  353. 
explanatory  matter,   378. 

fraudulent  representations  by  plaintiff,  as,  368. 
in  action  at   law,  353. 

ineffective,  that  refilling  was  done  at  request  of  customer,  274. 
in  equity,  353. 
insanity,  378. 

laches,  as  defense  to  accounting,  172. 
laches  or  delay,  172,  372. 
license  from   owner,   53,  354. 
misrepresentations  by  owner,  353. 

no    defense    that    purchaser    was    notified    of   real    nature   of    in- 
fringing goods,  360. 

none  to  show  defendant  added  "Improved"  to  infringing  mark,  373. 
none  to  show  defendant  placed  his  name,  initials  or  address  on 
infringing  goods,  294. 


824  INDEX. 

References  are  to  pages. 
DEFENSES— Continued. 

non-infringement,   354. 

of   abandonment,    not   favored,    177. 

of  equality  of  quality  of  goods,  373. 

of  infancy,  372. 

of  plaintiff  adding  coat-of-arms  to  trademark,  375. 

of  prior   use,   ineffective,   where   user   accompanied   by   false   rep- 
resentations, 374. 

of  registration  of  defendant's  mark,  372. 

of  using  name  and  address  in  conjunction  with  trademark,  373. 

plaintiff's   failure   to   advertise   assignment,   71. 

prior  use  must  be  on  same  class,  374. 

showing  that  infringement  has  ceased,  ineffective,  377. 

that   complainant    is   a   party    to    a   combination    in    restraint  of 
trade,   378. 

that  defendant  added  word  "Improved,"  373. 

that  defendant  did  not  intend  to  sell,  ineffective,  374. 

that  defendant  did  not  sell,  ineffective,  377. 

that  defendant  did  not  make  infringing  article,  ineffective,  377. 

that  defendant    has    been    licensed,    ineffective   where    license   re- 
voked,  377. 

that  defendant   has    ceased    infringing,    360. 

that  defendants    have    incorporated,    ineffective,    374. 

that  defendant  is  acting  as  agent,  ineffective,  377. 

that  infringing  goods  were  made  by  plaintiff,  ineffective,  373. 

that  infringement  has  ceased,  no  defense  in  action  at  law,  360. 

that  infringement  is  only  partial,  ineffective,  375. 

that  infringement  of  proper   name   is   done   under   fraudulent   li- 
cense, ineffective,  375. 

that  infringement  committed  by  agents  or  servants,  374. 

that  licensee   has   not  joined   in   action,   377. 

that  mark  has  become  publici  juris,  353. 

that  mark  is  common  to  the  trade,  353. 

that  others  are  infringing,  ineffective,   374. 

that  plaintiff  is  guilty  of  misrepresentations  to  public,  376. 

that  territorial  licensee  is  not  joined  in  suit,  ineffective,  377. 

use   by  others   on   goods  of  another   class,   374. 

■want  of  notice,   ineffective,   375. 

wrongful  use  of  words  "patent"  or  "patented,"  72, 

DEFINITIONS— 

acquiescence,  174. 

amount  in  controversy,  460,  n.  35. 
article  of   manufacture,   427. 
citizenship,  450,  n.   11. 
counterfeit   mark,    260. 
distinctive,   7. 


INDEX. 


825 


References  are  to  pages. 

OEFINITIONS— Continued. 

domicile,    450,   n.   9. 

essential   features  of  trademark.   451,  n.  13. 

fac-simile,    452,    n. 

function  of  trademarks,  15. 

generic  term,  83,   105. 

goodwill,  185. 

imitation  mark,  261. 

infringement,   242. 

label,   434. 

laches,   174. 

location,    450,    n.    10. 

owner,    486. 

person,  486. 

print,  434. 

quack  medicine,  220. 

registrant,  486. 

right  of  privacy,  231. 

states,   486. 

substitution,    276. 

trademark,  3,  486. 

tradename,   7. 

trade  secret,  219. 

treaty,   449.   n.    6. 
DEGREE   OF   CARE— 

expected  of  consumers,   264. 
DEGREE  OF  RESEMBLANCE— 264. 
DELAWARE    STATUTES,    538. 

DEMURRER— 

interposed  on  application  for  preliminary  Injunction,  381. 
confesses  allegations  of  fraud,  and  injunction   issues  if  demurrer 

overruled,  381. 
proper  attack  on  defects  upon  face  of  bill.  372. 
sustained    where    exhibited    conflicting   marks   show   no    infringe- 
ment, 372. 
to  title  shown  in  bill,  372. 

will   not  lie   to   bill   in  equity  on   ground   of  uniting  prayers  for 
damages  and  profits,  366. 
"DENT.  LONDON,"  42. 
"DERBY,"   284. 

"DERRINGER"    (fire-arms).   99. 
DESCRIPTION— 

requisites  of.  in  registration,  494. 
DESCRIPTIVE    PICTURE— 
not   a  trademark,   70. 


826  INDEX. 

References  are  to  pages. 

DESCRIPTIVE  WORDS— 

invalid  because  generic,  84. 
not  registrable,  455,  ?^.  24. 

valid    trademarks   if   remotely    descriptive,    86. 
why  objectionable  as  trademarks,  84. 
DESIGN— 

patented  by  another,  not  registrable  as  trademark,  457,  n.  26. 
"DESSICATED"    (codfish),    89. 
DETAILS— 

similarity  of,  301. 
"DEWEY'S    CHEWIES"— 

refused  registration,   239,  n.  13. 
"DIAMOND    STEEL"    (case),   289. 
DIRECTORS— 

of  corporation  as  defendants  in  action  for  infringement  by  cor- 
poration, 338. 
DISCOVERY— 

to  avoid  costs,  339. 
when  compelled,  395. 
"DISQUE,"    379. 
DISSIMILAR  WORD   OR  MARK— 

may    infringe,    290. 
DISSOLUTION— 

use  of  trademarks  by  partners  on,  26. 
use  of  trade  secrets  by  partners  on,  228. 
DISTILLERY  BRANDS— 

assignability   of,   34. 
DISTINCTIVE— 
defined,  7. 

trademark   must  be^   18. 
DISTRICT  OF  COLUMBIA— 

courts  of  appeals,  jurisdiction  under  act  of  1905,  475. 
DISUSE— 

abandonment   of   trademark   by,    179. 
DIVERSE   CITIZENSHIP— 

must  be  pleaded,  in  federal  practice,  350. 
"DOG'S  HEAD  BEER"    (case).  28L 

DOMICILE— 

defined,  450,  n.  9. 

"DORIC,"   284. 

DOUBLE  MEANING— 
words   of,   159. 


INDEX.  827 

References  are  to  pages. 

DRESS— 

of  goods,   247,    250. 
"DR.     LOBENTHAL'S    ESSENTIA    ANTIPHTHISICA,"    99. 
"DRUGGISTS'    SUNDRIES"    (cigars),    89. 

"DRUGGISTS'    SUNDRIES"— 

too  broad  for  class  in  registration,  451. 

"DRY    MONOPOLE"    (champagne),    89. 
"DUBLIN"   (soap),  99. 
"DUPLEX,"  284. 

DURATION— 

of   life  of  trademarks,  18. 
of  term   of   registration,   477. 

"DURHAM"    (tobacco),  89,  99,  129,   285. 
"DYSPEPTICURE,"    99,   293. 

E 

"ECONOMY."    284. 
"EDELWEISS"    (perfume),  99. 
"EGG"    (macaroni),   89. 
"EGYPTIAN    DEITIES,"    284. 
"ELASTIC"    (book-cases),   99. 
"ELASTIC  SEAM"    (drawers),  89. 
"EL   CABIO"    (tobacco),  115. 
"EL  DESTINO"    (cigars),  115.  284. 
"ELECTRO-SILICON,"  99,   110,   284. 
"ELGIN"    (watches),   89,    134. 
"ELK"    (cigars),    99. 

EMINENT    DOMAIN— 

goodwill    subjected    to,    195. 

"EMOLLIA"   (toilet  cream),  99. 

"EMOLLIORUM"    (leather   dressing),  89. 

"EMPIRE"    (stoves),   99. 

EMPLOYEE— 

enjoined  from  disclosing  trade  secrets,  220. 
liable  for  infringement,  338. 

EMPTY    PACKAGES— 

competitor  enjoined  from  buying,  260. 

"ENCYCLOPEDIA   BRITANNICA,"   89. 


828  INDEX. 

References  are  to  pages. 
ENGRAVER— 

of  fraudulent  marks,  259. 
ENSEMBLE— 

imitation  of,  255. 
"EPICURE"    (canned  salmon),  99. 
EQUALITY   OF   QUALITY— 

no    defense,   294. 
EQUITY— 

jurisdiction  of,  in  cases  of  unfair  competition,  361. 

relief  in,  379. 
"ESTATE   AND  EFFECTS"— 

goodwill,  not  included  in,  194. 
ESTOPPEL— 

as   a   defense,   353. 

must  be  pleaded,  353. 

of  license  to   deny  validity,  54. 

of  withdrawing  partner  as  against  subsequent  creditor,  where  old 
firm  name  used,  212. 

"ETHIOPIAN"    (stockings),  99,   119,   n.   68. 
"ETON"   (cigarettes),  182. 
"EUREKA"    (fertilizer,  etc.).   99,   114. 
"EUREKA"    (shirts),  99,  18L 
"EVAPORATED"    (food),    90. 
"EVER  READY"    (coffee   mills),   90. 
"EVERYDAY   SOAP,"    291. 
EVIDENCE— 

burden  of  proof  in  refilling  cases,  392. 

burden  of  proving  abandonment,   180. 

burden   of   proving   prior    right,    180,   n.    43. 

delay  in  order  to  secure,   not  laches,  172. 

expert,   on  question  of  infringement,   393. 

matters  of  which  courts  take  judicial  notice,  391. 

of  abandonment,   176. 

of  deception,   when  necessary,  393, 

of  defendant's  sales,  393. 

of  experts,  as  to  habits  of  customers,  392. 

of  fraud,   271. 

of  fraud,  particular  instances,  272. 

of   fraudulent   intent — 

in    trademark    cases,    271. 

in  other  cases  of  unfair  competition,  271. 

in  criminal   prosecution,   271. 

of  good   faith   394. 

of  Intent  of  contemnor  immaterial,  398. 


INDEX.  829 

References  are  to  pages. 
ETVIDENCE— Continued. 

of  loss  of  sales,  358. 

of  loss  of  sales,  in  action  at  law,  358. 

of  other  frauds,  272. 

of  submission   of  others,  396. 

printing   label   in   foreign   language,   evidence  of  fraud,   136. 

registration  as,  of  extent  of  claim,  322. 
EVOLUTION   OF   LAW   OF   TRADEMARKS,   13. 
"EXCELSIOR"    (soap),  99,  114.  181,  284. 
"EXCELSIOR"    (stoves,    etc).,    99,    182, 
EXCLUSIVE   LICENSEE— 

must  be  a  party,  53. 
EXCLUSIVENESS— 

as  test  of  trademark's  validity,  17. 
EXECUTION— 

may   be   levied   on   trade  secret,   228. 

on   goodwill,   192. 
EXEMPLARY   DAMAGES— 

in  actions  at  law,  355. 

may  be  allowed  where  no  actual  damages  proven,  355. 
EXHIBITS— 

attaching   to    Injunctive   order,   395. 

introducing  conflicting  marks,   as,   372. 

demurrer  may  be  sustained  on   inspection  of,  372. 
EXPERT   EVIDENCE— 

as  to  habits  of  customers,  392. 

as  to  variance  in  alcoholic  proof  ia  liquors,  392. 

on  question  of  infringement,  392. 

valuable  in  doubtful  case,  392. 

on  technical  and  scientific  questions,  392. 

on  catch-words  applied  to  goods,  393. 
EXPORTERS— 

may  have  trademarks,  57. 
EXTENSIVE  SALE— 

does  not  invalidate  mark,  120. 
"EXTRACT    OF    NIGHT-BLOOMING    CERBUS"     (perfume),    90. 

F 

"FABER"    (pencils),   100. 
FAC-SIMILE— 

defined,  452,  n. 

need   not   contain   unessential   features  of  mark,  452,  n. 

one  only  needed  for  registration,  under  Act  of  1881.  452,  n. 

required  in  registration,  under  Act  of  1905.  468. 


830  INDEX. 

References  are  to  pages. 
"FADETTES"    (case),  147. 
"FAIRBANK'S    PATENT"    (scales),    90. 
FALSE  LABELS— 

averment  of  bill   to   restrain   dealing  in,  778. 
FALSE   PRETENSES— 

in  sale  of  goods  under  imitation  mark,  344. 
FALSE    REPRESENTATION— 

as   to   foreign  origin   of  goods,   137,   182. 

in  connection  with  trademarks,  67,  68,  70. 

deprives  owner  of  registered  mark  of  protection,  460,  n.  35. 
FALSELY  MARKING— 

article  "patented,"   74. 
"FAMILY"    (salve),  100. 
"FAMOUS"    (stoves),    90. 
"FANCY  GOODS"— 

too  broad  for  class  in  registration,  451,  n.  12. 
"FARTHEST  NORTH"   (book  title),  292. 
"FAVORITA"    (flour),  100. 
"FAVORITE"   (letter  file),  90. 
FEDERAL   COURTS— 

jurisdiction  concurrent  with  state  courts  in  trademark  cases,  331. 

jurisdiction   dependent   upon   diverse   citizenship   in   cases  of   un- 
registered  trademarks,   327. 

jurisdiction  of,  in  cases  of  unfair  competition,  329. 

jurisdiction   of,   in  trademark   cases,  331. 

FEES  (See  Statutes;  Act  of  1905,  and  Statutes  of  the  Several  States)  — 

for  registration  of  trademark  in  patent  office,  506. 

for  registration,   when   refunded,   453,   n.   17. 
"FERRO-MANGANESE"    (mineral  water),  110. 

"FERRO-PHOSPHORATED  ELIXIR  OF  CALISAYA  BARK,"  90,  109. 
"FIBRE  CHAMOIS"    (dress   linings),   100. 
"FILOFLOSS"    (silk),  100,  29L 
"FILOSELLE,"    291. 
"FILTRE   RAPIDE"    (filters),  100. 
"FIRE-BOARD,"   379.  n.   86. 
"FIRE-PROOF,"    (oil),    90. 
FIRM   NAME— 

as  part  of  goodwill,  211. 

as  trademarks,  141. 

passes  to  purchaser  of  assets  only  by  express  agreement,  210. 
FISH  INSPECTOR— 

marks  of,  446,  w.  3. 


INDEX.  831 

References  are  to  pages. 

FLAG— 

not  registrable,  471. 
"FLINCH"   (game),  90. 
"FLOR  DE  MARGARETTA,"  284. 
"FLOR    FINA"    (cigars),    115. 
FLORIDA,    STATUTES,    541. 
FOREIGN  ADJUDICATIONS— 

upon   right  to   trademark,   397,  n, 
FOREIGN    CORPORATION— 

right   of,   to    enjoin    formation    of    new   corporation    under    same 
name,   154,   156. 
FOREIGNERS— 

had  no  special  privilege  under  act  of  March  3,  1881,  462,  n.  41. 
FOREIGN   LANGUAGE— 

printing  generic  word  in  letters  from,  does  not  make  trademark, 
85. 

use  of,  as  evidence   of  unfair  competition,   136. 

words  from,  as   trademarks,   115. 
FOREIGN  TRADEMARK  LAWS— 

enumerated,  806. 
FORGERY— 

counterfeiting  trademarks  is  not,  345. 
FORM— 

not    registrable    as    trademark,    462,    n. 

infringement  of,  250. 

FORM,    SIZE    AND   COLOR— 
no  trademark   in,   243. 

FOftMER— 

adjudication,  380,  396. 

FORMS    (Forms  for  state  registration  are  indexed  under  the  names 
of  the  several  states.)  — 
answer,   781,    784. 
bill  of  complaint: 

trademark  infringement,  749,  760,  767,  772,  778. 

unfair  competition,  755. 

against   dealer   in   spurious   labels,   778. 
cancellation,  application  for,  514. 
contract  against  disclosing  trade  secret,  223. 
covenant  not  to  re-engage,  192,  note;   202. 
declaration,  action   at  law^  746. 
drawing,   form   of,   513. 
injunction: 

interlocutory    decree,    789. 


832  INDEX. 

References  are  to  pages. 
FORMS— Continued. 

final  decree,  792,  793. 
writ,  791. 
interrogatories,    754. 

mandate,   circuit  court  of  appeals,  794. 
opposition,   notice   of,   514. 
pleading  registration  of  trademark,  774. 
registration,  prints  and  labels: 
application  by: 

an   individual — prints,  438. 
a   firm — prints,    438. 
a    corporation — prints,    438. 
an  individual — labels,  440. 
a    firm — labels,    440. 
a   corporation — labels,  440. 
trademark  registration: 
petition,   509. 

statement  by  an   individual,   509. 
declaration  for  an  individual,  509. 
statement    by    a    firm,    510. 
declaration  for  a  firm,  510. 
statement  by  a  corporation,  511. 
declaration  for  a  corporation,  511. 
declaration    under    ten-year-proviso,    511. 
declaration  for  a  foreign  applicant,  511. 
FORMS  OF  ACTION,  340. 
FORMER   ADJUDICATION— 

value    of,    380. 
FORMULA— 

protection    of.    224. 
FRAUD— 

as  the  basis  of  equitable  jurisdiction,  35,  36,  38,  39,  41. 
evidence  of,   136. 

how  charged  in  bill  to  restrain  unfair  competition,  366,  n,  19. 
in  using  one's  own  name,   145. 
no  fixed  rules  for  dealing  with,  in  equity,  303. 
must  be  pleaded  in  action  at  law,  351. 
must   he   proven   in   cases   of   unfair   competition,   44. 
presumed  from  printing  American  label  in  foreign  language,  136. 
presumed    from   wrongful   use   of  trademark,   38,   44. 
FRAUDULENT    INTENT— 
how   proven,   272. 
may  be  inferred,   257. 
must  be  shown   in  action  at   law,   257. 

presumed  in  equity  from  wrongful  use  of  trademark,  38,  257. 
proof   of,    259,    272. 


M 


INDEX.  833 

References  are  to  pages. 

FRAUDULENT  PACKAGES— 

liability  of  dealer   in,   340. 
FRAUDULENT    REPRESENTATIONS— 

by  plaintiff,  as  a  defense,   353.   368. 
"FRENCH"    (paints),    90. 
"FRENCH  TISSUE"    (medicated   paper),   90. 
"FRUIT   SALT,"   370. 
"FRUIT"    (vinegar),  90. 
FUNCTION— 

of  trademarks,  15. 

G 

"GALEN"    (manufactured  glass),  90. 

"G.  E."    (electric  lamps),  299. 

GENERIC   TERMS— 

cannot   be  trademarks,  66. 

classified,  83. 

common  to  trade,  no  exclusive  right  to,  conveyed  by  registration, 

111. 
defined,   83. 

from    dead    languages,    not   valid    trademarks,    114. 
Illustrations   of,   87. 

include  geographical  and  descriptive  words  and  proper  names,  83. 
judicially    defined,    105. 
not  made  trademarks  by  registration,  321. 

"GENUINE  YANKEE"   (soap),  245. 

GEOGRAPHICAL   NAMES— 

as    employed    by    sole    owner    of    natural    product    and    place    of 

production,   55,   84. 
as  trademarks,  55,  86,  128. 

cannot  be  essential  feature  of  trademark,  455. 
classification  of,  455,  n.  24. 
not    registrable,    generally,    455. 
when  registrable,  455. 
false  use  of  vitiates  trademark,   135. 
may  be  descriptive  or  deceptive,   455,  n.   24. 
not  made  registrable  by  surrounding  geometrical  figure,  456,  n. 
not    registrable    under   Act   of    1905,    471. 
not  trademarks  because  generic,  83. 
protected   against  unfair  competition,  121. 
when   protected   as  trademarks,   129. 
who  may  complain  of  false  use  of,  136. 
why  objectionable  as  trademarks,  83. 

53 


834  INDEX. 

References  are  to  pages. 

GEORGIA,  STATUTES,   546. 

"GERMAN"    (sweet   chocolate),    135,    285. 

"GERMAN    HOUSEHOLD   DYES,"    285. 

"GERMANIA,"    285. 

"GERMEA,"    285. 

"G.  F.,"   299. 

"GIBRALTAR"    (lamp  chimneys),   90. 

GLASSBLOWERS   AND    GLASS-STAINERS— 
goodwill  of,  188. 

"GLENDON"    (iron),    90. 

"GLENFIELD"    (starch),   100. 

"GOLD  DUST,"  285. 

"GOLD  LABEL"   (bread),  90.  i 

"GOLD   MEDAL"    (saleratus),  90.  ^ 

"GOLDEN  CROWN"    (cigars),  100,  285. 

"GOLDEN"   (ointment),  90. 

"GOLDEN  WEDDING"    (whiskey),   100. 

"GOLIATH,"  449. 

GOODWILL— 

administration  of,  in  partnership  estate,  212. 

advertising  as   an   element   of,   39,   n.    17. 

appraisal    of,    205. 

analogous    to   trademarks,   204. 

as  subject  of  levy  and  sale,  192. 

classes  of  business  having,  187. 

competition  between  vendor  and  vendee,  206. 

conveyance  of,   by  stockholders,   202. 

covenant  to  make  valuable,  209. 

damages   for    impairment  of,   213. 

defined,   185,   186,   187. 

general   and  local,   distinguished,   185,   195. 

goes   to   personal   representative,   206. 

in   relation   to  firm  and   corporate  names,  196. 

inseparable   from   trademarks,   8,    193. 

involuntary   alienation   of,  192. 

jurisdiction   in   federal    courts   in   cases   involving,   217. 

mortgage  of,   192. 

not  necessarily  included  in  mortgage  of  entire  assets,  194,  n.  65. 

of  foreign  corporation,   192. 

of  learned   professions,   190. 

of   newspaper,    192. 

of    partnership,    210. 

professional,    190. 


INDEX.  835 

References  are  to  pages. 

GOODWILL— Continued. 

remedies   of   purchaser,   212. 

rescission  of  contract  for  sale  of,  215. 

rights  of  vendor,  197. 

sale  of,  191. 

sale  of,  on  dissolution,   2UG. 

sale  of,  conveys  trademarks  without  special  mention,  27. 

subject  to  eminent  domain,  195. 

taxation   of,   192. 

trademarlts  inseparable  from,  61. 

trademarks   can   only   be  assigned    with,   61. 

valuation  of,  204. 

vendee  of,  enjoined  from  re-engaging  in  business,  206. 

what  words  necessary  to  convey,  193. 
"GOODWILL.   ETC."— 

defined,   194. 
"GOODYEAR   RUBBER   CO.,"   90,   152. 
"GOTHIC,"   285. 

"GOURAUD'S  ORIENTAL  CREAM"    (cosmetic),  100. 
"GRAND  MASTER"    (cigars),  100. 
"GRANITE"   (kitchen  utensils),  90. 
"GRANOLITHIC"    (artificial   stone),   90. 
"GRANULATED    DIRT-KILLER"    (soap),   90. 
"GRAPE-NUTS,"    291. 

"GREATEST  VALUE  FOR  THE  MONEY"    (shoes),  90. 
"GREEN    MOUNTAIN"    (sythe-stones).    91,    100. 
"GRENADE"    (syrup),   100,    119. 
GROUPS  OF  LETTERS— 

as  trademarks,  297. 
"GUARANTEED"    (corsets),    91. 
"GUENTHER'S  BEST"    (flour),  91. 
GUILTY   KNOWLEDGE— 

need   not  be   proven,   when,   259. 
"GUINNESS,"   285. 
"GYRATOR"    (bolting  machines),  91. 


H 


"HABANA,"   404,  n.   16. 
HABERDASHER— 

goodwill   of,    188. 
"HAMBURG"   (tea).  91. 


836  INDEX. 

References  are  to  pages. 
"HAND   GRENADE"    (fire   extinguisher),   91. 
"HANFORD'S   CHESTNUT   GROVE"    (whiskey),   100. 
"HANSA"    (lard,  etc.),  100. 
HARDWARE   DEALER— 

goodwill  of,  188. 
"HARVEY'S    SAUCE/'   91. 

"HAZLETON    BOILER    COMPANY"    (case),    156. 
"HEADACHE    WAFERS,"    91. 
"HEALTH  FOOD"    (cereal  products),  91. 
"HEALTH  PRESERVING"    (corsets),  91. 
"HELIOTYPE"   (prints),  100. 
"HERO"    (jars),   100. 

"HIGHLY    CONCENTRATED     COMPOUND    FLUID    EXTRACT    OF 
BUCHU,"  91. 

"HOLBROOK'S"    (school  apparatus),  91. 

"HOLLAND  HOUSE"    (case),  312. 

"HOME"    (sewing    machines),    100,    285. 

"HOMEOPATHIC    MEDICINES,"    9L 

"HONEYMOON,"   285. 

"HOOSIER"    (drills),   100. 

"HOSTETTER'S  BITTERS"— 

infringement  by  dealing  in  material  for  refilling,  273. 

infringed  by  other  words,  285. 
HOTEL    NAMES,    310. 
"HOWQUA'S  MIXTURE,"  100. 

"HUMPHREY'S  HOMOEPATHIC  SPECIFICS,"  285. 
"HUNTER"    (shoes  etc.),  100. 
"HUNTSMAN'S  CHERRY  BRANDY,"  281. 
"HUNYADI"   cases,   100,   173. 
"HURRICANE,"   291. 
"HYDRO-BROMO  SODA  MINT,"  91. 
"HYGEIA"    (water),  100. 
"HYGIENIC"   (underwear),  91. 
"HYGIENIQUES"   (suspenders),  100, 


IDAHO,    STATUTES,   549. 

"IDEAL"   (fountain  pens),  101. 

ILLINOIS.  STATUTES  AND  FORMS,  553,  558. 


INDEX.  837 

References  are  to  pages. 

ILLUSTRATIONS— 

of  generic   terms,   87. 

of  valid   trademarks,   96. 
IMITATION— 

of  particulars  common   to   the  trade,  261. 

of  trademarks,   261. 

of  trademark,  may  be  limited  or  partial,  261. 
"IMPERIAL"    (beer),   91. 
IMPORTERS— 

may  have  trademarks,  57. 
IMPOSITION— 

on   the   public,   as   test  of  infringement,   266. 
IMPROPER   JOINDER— 

of  other  causes  of  action   with   suits  to  restrain  unfair  competi- 
tion, 340. 
"IMPROVED"— 

addition  of,  to  mark,  no   defense,   373. 
INDIANA,   STATUTES  AND   FORMS,   559,   564. 
"INDIAN   POND"    (sythe-stones).   101. 
"INDIAN  ROOT"    (pills),  101. 
INDIAN   TRIBES— 

commerce  with  may  be  wholly  in  a  single  state,  448,  n.  5. 
"INDURATED    FIBRE"    (wood-pulp    products),    91,    109. 
"IN-ER-SEAL"    (bakery    products),    101. 
INFANCY— 

not  a  defense,  372. 
INFANT— 

liable  for  costs,  402. 
INFRINGER— 

liable  for  whole  profit  on  infringing  article,  383. 

may  recover  from  person  procuring  the  infringement,  406. 

INFRINGEMENT— 

by    a    dissimilar    word    or    mark,    280. 

by  applying  manufacturer's  mark  to  his  goods  not  intended  to  be 

so   marked,    275. 
by  counterfeiting,   260. 
by  goods  of  equal  quality,  294. 
by  imitation,   261. 

by  others  than  defendant,  no  defense,  374. 
by  refilling  genuine  packages,  273. 
by  solicitation   of  complainant's   agent,   368. 
defined,    242. 
discontinuance   of,   no   defense   to   action    for   damages,   377. 


838 


INDEX. 


References  are  to  pages. 

INFEINGEMENT— Continued. 

evidence  of  loss  of  sales  resulting  from,  360. 

expert  evidence  as  to,  392. 

how  pleaded,  in  action  at  law,  351. 

in  another  jurisdiction,  304. 

judicial   tests  of,   299. 

liability  of  person  ordering,  to   manufacturer,   260. 

may  be  partial,  242,  375. 

must  be  on  same  class  of  goods,  120,  n.  67,  268,  312. 

of  catchwords,  123. 

of  form,  size  and  color,  243,  250. 

tested   by  probability  of   deception,   262. 

tests  of,  299. 

what  participants  liable  for,  336. 

when  single   instance  of,  warrants   injunction,   393,   n.   13. 

INITIALS— 

as   trademarks,    297. 

INJUNCTION  (see  FORMS;  INTERLOCUTORY  DECREE;  PRELIM- 
INARY   INJUNCTION.)  — 

against  dealers,  printers,   engravers,   etc.,  259. 

against    disclosure    of    trade-secret,    219. 

against  fraudulent  imitation  of  tin  tag,  243. 

against  licensee  on  breach  of  condition,  377. 

against  refilling,   273. 

against  vendee  of  good-will  re-engaging  in  business,  206. 

cannot  issue  in  suit  to  which  exclusive  licensee  is  not  a  party,  53. 

denied  when  doubt  whether  plaintiff's  mark  generic,  379. 

denied  when  plaintiff  guilty  of  laches,  172. 

denied  where  exclusiveness  of  plaintiff's  fight  doubtful,  379. 

denied  where  plaintiff's  right  not  exclusive,  380. 

denied  where  plaintiff's  right  or  defendant's  infringement  doubt- 
ful,   379. 

enlarging   on   hearing   of   contempt   proceedings,    399. 

forms  of,  789,  791. 

granted   against   threatened    infringement,    377. 

granted  on  ex  parte  affidavits  only  in  clear  case,  380. 

limited  as  to  territory,  20. 

may    be   granted    without   costs,    406. 

preliminary,  may  be  reviewed  and  enlarged  on  appeal,  in  federal 
practice,   389. 

may  issue  against  all  persons  connected  with  infringing  corpora- 
tion,  207. 

no  contempt  in  violation  of,  where  stayed  by  appeal,  399. 

refused  owner  of  registered  mark  containing  false  representation, 
460,  n.  35. 


INDEX.  839 

References  are  to  pages. 

INJUNCTION— Continued. 

preliminary,  refused  where  defendant  solvent,  and  injury  may  be 
repaired   by  money  judgment,  379,  n.   83. 

right   to,   not   lost  by   laches   and   acquiescence,   172. 

value   of   interlocutory  decree    in  another  case,  397. 

preliminary,  weight  of  former  adjudications  concerning  plaintiff's 
title,    upon,    380,    396. 

when  warranted  by  evidence  of  single  infringement,  393,  n.   13. 

who   liable   to,   257. 

will  lie  against  registrant  by  one  having  prior  right,  4C0,  n.  35. 
INJURY— 

need  not  be  proven,  377. 
INOPERATIVE  DEFENSES  (See  Defenses)  — 

that  the  mark  has  become  indicative  of  quality  through  extensive 
sales,  120. 
INSANITY— 

not  a  defense  to  charge  of  infringement,  378. 
"INSECTINE"    (insect   powder),   101. 
INSPECTION  BY  THE  COURT— 

of  conflicting  marks,  272. 
INSPECTION— 

of  books  and  papers,  395. 
"INSTANTANEOUS"    (tapioca),    91,    160. 
"INSURANCE"    (oil),   101. 
INTENT— 

distinction    between   trademark   and   other   cases   as   to,   256. 

generally,  255. 

immaterial    in   action    in    equity,    256. 

immaterial  where  no   injury  done,  256. 

of  parties  as  to  assignment  of  trademark,  178. 
INTENTION— 

actual  intention  to  adopt  trademark  necessary,  21. 

INTERFERENCE— 
appeals,   421,  n.   31. 

may  be  declared   between  partner  and   firm,   458,  n.   29. 
better  title  prevails, 
between  registrant  and  applicant,  324. 
burden  of  proof  upon  applicant,  324. 
effect  of  decision,  421,  7i.  31,  458,  n.  30. 
nature  of  issues   in,  326,   421,   458. 
nature   of  practice   in,   324,   325. 
preliminary    statement,   325. 

registrant  under  act  of  1870  notified  of  application  under  act  of 
1881   to   register  similar  mark,   458,   n.   29. 


840  INDEX. 

References  are  to  pages. 

INTERLOCUTORY  DECREE  (see  Forms)  — 

as   evidence   of   right  to   trademark,   397. 

decree   may   adjudge    costs,    407. 
INTERMITTENT    USE — 

will  not  establish   trademark  right,  21. 
"INTERNATIONAL   BANKING    CO.,"    9L 
INTERNATIONAL    CONVENTION— 

for  protection  of  industrial   property,  798. 

United   States  not  a  party,  804,  n. 
INTERROGATORIES— 

form  of,  754. 
INTERRUPTED  USE— 

will  not  create  title,  21,  58. 
INTERSTATE   COMMERCE— 

present   federal   act   relates   to   trademarks   used   in,   493. 
"INTIMIDAD"    (cigars),  115. 
INVENTION— 

name  of  an  unpateated,  108. 
"INVIGORATOR"    (spring   bed    bottoms),    101. 
IOWA,   STATUTES  AND  FORMS,  565,  567. 
"IRON   BITTERS,"    91. 
"IRON  CLAD"    (boots),  101. 
"IRONSTONE"  (water  pipe),  91. 


JEOPARDY— 

of  mark  by  defendant's  acts  should  be  pleaded,  330. 
"J.   H.  W."    (boots),  299. 

"JOHNSON'S    AMERICAN   ANODYNE"    (liniment),    92. 
JOINDER— 

of  causes  of  action,  340. 

of  parties  plaintiff,  334. 
JOINT    TORT-FEASOR— 

liable  for  whole  damage  resulting  from  tort,  384. 

licensor  and  licensee  as,  146. 
JUDICIAL  DEFINITIONS— 

of   goodwill,    185. 

of  trademarks,  3. 

JUDICIAL  NOTICE,  391. 

JUDICIAL  TESTS— 

of  infringement,  299. 


INDEX.  841 

References  are  to  pages. 
"JULIENNE"     (soup),    92. 
"JUNKET   TABLETS,"    101,    285. 
JURISDICTION— 

of  equity  based  on  right  of  property  in  trademark  cases,  41. 

of  equity  in  matters  of  trade-secret,  221. 

of  federal  courts  in  cases  involving  goodwill,   212. 

of  federal  courts  in  cases  of  unfair  competition,  46,  329,  331. 

of  federal  courts  in  trademark  cases,  327. 

of  federal   courts  under  Act  of  1881,  320. 

of  federal  courts  in  trademark  actions  between  citizens  of  same 
state,  46. 

where  complainant  an  alien,   461,   n.   39. 

of  state  courts,  in  trademark  cases,  331. 

of  state  and  federal  courts,  concurrent  in  trademark  cases,  331. 

K 

"KAISER"    (beer),  92,   101. 
KANSAS   STATUTES,   568. 
"KATHAIRON"    (remedy),  101. 
KENTUCKY   STATUTES,   569. 
"KENTUCKY  CLUB"   (whisky),  92. 
"KENTUCKY'S  CRITERION,"   285. 
"KEYSTONE  LINE,"  337. 
"KID  NEE  KURE,"  85,  92. 
"KIDNEY  AND  LIVER"    (bitters),  92. 
"KING  BEE"    (smoking  tobacco),  101. 
"KITCHEN  CRYSTAL"    (soap),  101. 
"KNICKERBOCKER"    (shoes),  101. 
"KOFFIO"    (cereal  coffee),  101. 
"KOKOKO"— 

aboriginal,  refused  registration  as  trademark  for  cotton  goods,  116. 


LABEI^- 

as  commercial   dress,   258. 

dealer  in,  liable  for  damages,  384. 

defined,  434. 

designing  by  court  for  defendant's  direction,  144. 

engraver,  liability  of,  259. 

false,  averments  of  bill  to  restrain  dealing  in,  260. 

false,  manufacture  of,  259. 


842  INDEX. 

References  are  to  pages. 
LABEL — Continued. 

fraudulent  intent  of  manufacturer  presumed,  where,  260. 

if  containing  false  statements  invalidates   trademark  used  there- 
with, 67. 

serves  same  purpose  as  trademark,  258. 

intended  to  be  removed  by  retail  dealer,  301. 
LABEL  MANUFACTURER— 

liability  of,  259. 
LACHES— 

a  bar  to  preliminary  injunction,  172. 

a  bar  to  relief  against  unfair  competition,  173. 

as  a  defense,  172. 

as  governed  by  statute  of  limitations,  360. 

distinguished   from  acquiescence,   174,  175. 

may  bar  account,  172,  372. 

may  work  abandonment,  120. 

no  bar  to  injunction,  172. 

none  where  delay  is  to  secure  evidence,  172. 

none  where  plaintiff  ignorant  of  infringement,  172. 
"LACKAWANNA"   (coal),  92. 
"LA  CRONICA"  (newspaper),  101. 
"LACTO-PEPTINE,"   101,   286. 
"LA  FAVORITA"    (flour),  101,  106,  116. 
"LAIGLON"  CASE,  170. 
"LAKE"    (glass  product),  92. 
"LAMOILLE"    (scythe-stones),  101. 
"LA  NORMA"    (cigar  boxes),  101. 
"LANDLORDS'  PROTECTIVE  BUREAU,"   285. 
"LA  NORMANDI"    (cigars),  92,  101. 
"LANOLINE"    (patented   wool-fat    preparation),    109. 
LECTURES— 

publication  of,  restrained,  225. 
"LEOPOLD"    (cloth),  101. 
"LEOPOLDSHALL,"  285. 
"LE  PAGE"   (glue),  101. 
LETTERS  AND   NUMERALS— 

whether  subject  to  appropriation  as  trademark,  295. 

protected  against  unfair  competition,  296. 
LETTERS  PATENT— 

compared  with  trademarks,  13. 
LEVY  AND  SALE— 

on  goodwill,   192. 

on  trade-secrets,  228,  229. 


INDEX.  843 

References  are  to  pages. 

LIABILITY— 

of  contributory   infringer,   339. 

of  deception,  in  case  of  unfair  competition,  271. 

of  all  connected  with  infringement,  258. 

LIBEL— 

charging  trademark   infringement,  46,  47,  48. 

in  trade,  46. 
LICENSE,  52. 

as  a  defense,  53. 

joint,  of  patent  and  trademark,  53. 

once  revoked,  no  defense  to  subsequent  infringement,  54. 

revocable,  to  use  trademark,  54. 

to  use  mark  for  fraudulent  purpose,  155. 
"LICENSED  VICTUALLERS"  (relish),  102. 
LICENSEE— 

estopped  to  deny  validity,  54. 

exclusive,  must  be  party  to  action,  53, 

joint  tort-feasor  with   licensor,   146. 

may  sue  for  infringement,  53,   334. 

territorial,  need  not  be  joined  as  plaintiff,  53. 
LICENSOR— 

necessary  party  to  suit  for  infringement,   83. 
"LIEBIG'S   EXTRACT   OF   MEAT,"   92. 
"LIEUTENANT   JAMES'   HORSE   BLISTER,"   92. 
"LIGHTNING"   (hay  knives),  102,  285. 
"LILIPUTIAN  BAZAAR"  CASE,  309. 
"LIMETTA,"   285. 
"LINOLEUM,"  92,  109. 
"LION"    (merchandise),  102. 
LIQUIDATED  DAMAGES— 

in  contracts  affecting  goodwill,  213. 
LITHOGRAPHS— 

improper   reproduction   of,    restrained,   225 
"LITTLE   SHOP,"   286. 
"LIVEROID,"  293. 
"LIVERPOOL"    (cloth),  102. 
LIVERY  STABLE— 

goodwill  of,  188. 
LOCATION— 

change  of,  as  evidence  of  fraud,  272. 
"LOCH   KATRINE"    (whiskey),   92. 
"LONDON  WHIFFS"    (cigars),  102. 


844  INDEX. 

References  are  to  pages. 

•'LONE  JACK"    (tobacco),  102,  268, 

LOSS  OF  SALES— 

as  proof  of   damages,  358. 

how  established  in  cases  of  infringement,  394. 

LOUISIANA  STATUTES  AND  FORMS,  570,  573. 

M 

"MAGIC"   (scythe-stones),  102. 
"MAGNETIC  BALM"    (ointment),  102,  110. 
"MAGNOLIA"    (whiskey).  34,   102. 
"MAGNOLIA"    (metal),  92. 
MAIL-MATTER— 

protection  of,  148,  n.  55,  308. 
MAINE  STATUTES  AND  FORMS,  574,  580. 
"MAIZENA"    (corn  flour),  102,  286. 
"MALTED    MILK,"    92. 

MANDAMUS— 

does  not  lie  to  direct  action  of  commissioner  on  trademark  appli- 
cations, 457,  71.  28. 
MANUFACTURER  OF  FALSE  LABELS— 

liability  of,  259. 
"MANUFACTURERS'  OUTLET  CO.,"  286. 
"MAPLE  LEAF,"   293. 

MARK— 

common  to  a  trade,  106,  107,  111. 
MARKING  ARTICLE  "REGISTERED  U.  S.  PATENT  OFFICE,"  323. 
MARQUE   DE  COMMERCE— 

comprehended  by  our  word  trademark,  6. 
MARQUE  DE  FABRIQUE— 

comprehended  by  our  word  trademark,  6. 
MARRIED  WOMAN— 

having  separate  estate,  liable  for  costs,  402. 
"MARSHALL'S  CELEBRATED"    (liniment),  92. 
"MARVEL"    (mill  products),  102. 
MARYLAND  STATUTES  AND  FORMS,  581,  584. 
"MARYLAND  CLUB  RYE,"  92,  286. 
"MASONIC"   (cigars),  92. 
"MASON'S  PATENT"   (jars),  72. 
MASSACHUSETTS    STATUTES  AND  FORMS,   585,   591. 


INDEX.  845 

References  are  to  pages. 

MASTER  AND  SERVANT— 

implied  contract  not  to  disclose  trade  secret,  222. 
MATERIAL— 

not  registrable  as  trademark,    452,  n. 
"MATZOON"   (fermented  milk),  92,  117. 
"MAZAWATTEE"    (tea),  116. 
MEANINGLESS— 

trademark  must  be,  71,  n.  17. 
MEASURE   OF   DAMAGES— 

in  action  for  breach  of  covenant  not  to  re-engage,  214. 

in  actions   for  invasion  of  goodwill,  213. 
"MECHANICS'   STORE,"    286. 
MEDALS— 

of  award,  fictitious,  273. 
"MEDICATED  MEXICAN  BALM"   (medicine),  102. 
"MEDICATED  PRUNES"    (medicine),  92. 
"MENLO  PARK"    (watches),  102. 
MERCHANDISE— 

cannot  be  a  trademark,  112. 

of  substantially  the  same  descriptive  properties,  460. 
"METALLIC   CLINTON"    (paint),   93. 

METHOD   OF  ARRANGEMENT— 

not  a  trademark,  113,  243. 
MICHIGAN  STATUTES  AND   FORMS,  593,   597. 
"MICROBE  KILLER,"  93. 
MINNESOTA   STATUTES,   598. 
"MINNESOTA  PATENT"    (flour),  8. 

MINOR  DIFFERENCES— 

of  forms  and  dress,  no  defense,  302,  n.  28. 

MISREPRESENTATION— 

as  to  size  of  package,  when  package  is  ordinary  size  known  to 

the  trade,  376. 
collateral,  376. 
enjoined  whether  oral  or  written,  277. 

MISSISSIPPI  STATUTES,  607. 

MISSOURI  STATUTES  AND  FORMS,  609,  616. 

MISSPELLING— 

generic  word  does  not  make  trademark,  85. 

MISTAKE— 

in  registration  by  a  partner,  creates  a  trust,  334,  n.  30. 


846  INDEX. 

References  are  to  pages. 

MODE  OF  APPLICATION— 

must  be  stated  in  application  for  registration,  451. 
MODERN   FOREIGN  LANGUAGES— 

words  taken  from,  as  trademarks,  115. 
"MOJAVA"    (coffee),  102. 
"IVIOLINE"    (plows),  93. 
"MOMAJA,"   286. 
"MONEYS,  STOCK  IN  TRADE,  DEBTS,  EFFECTS  AND  THINGS"— 

includes  goodwill,  194. 
MONOGRAMS— 

as  trademarks,   299. 
MONOPOLIES—  { 

trademark  rights  as,  49. 
MONTANA   STATUTES,   618. 
"MONTSERRAT"    (lime   juice),    93. 

"MORSE'S   COMPOUND    SYRUP   OF   YELLOW   DOCK  ROOT,"   286. 
MORTGAGE— 

of  assets  of  business  does   not   necessarily  include   goodwill,   194, 
n.   65. 

of  goodwill,  192. 
MORTGAGEE— 

lien  of,  upon  infringing  goods,  339. 
"MOTTLED  GERMAN  SOAP,"  287. 
"MOXIE  NERVE  FOOD,"  287. 
"MOUNT  VERNON  RYE,"  250. 
"MUFFLET"    (neck  scarfs),  102,  292. 

N 

NAME  (see  Proper  Names)  — 
aflSxed  to  establishment,  146. 
necessary,  of  a  product.  111. 

of  celebrity,  refused  registration  when  also  geographical  name,  129. 
of  defendant,  added  to  mark,  circumstance  in  his  favor,  294. 
of  place  of  amusement,  146. 
of  secret  preparation,  219. 
one's  own,  139. 

NAME   OF   PATENTED  ARTICLE— 

made  publici  juris  by  expiration  of  patent,  78. 

protected  from  unfair  competition  after  expiration  of  patent,  122. 

NAMES— 

christian,  of  applicants  for  registration  should  be  given,  450,  n.  8. 
of  celebrities,  239. 


INDEX.  847 

References  are  to  pages. 
"NAPOLEON"    (cigars),  102,  139. 
"NATIONAL  POLICE  GAZETTE"   CASE,   165. 
"NATIONAL  SPERM"    (candles),  93. 
"NATIVE   GUANP"    (fertilizer),  93. 
NATURAL   PRODUCT— 

name  of,  as  trademark,   55,   129. 
NEBRASKA   STATUTES,  619. 
"NE   PLUS  ULTRA,"   114. 
NEVADA   STATUTES,  621. 
"NEW  ERA"    (newspaper),  102,  165. 

NEW  HAMPSHIRE  STATUTES  AND  FORMS,  625,  627. 
NEW  JERSEY  STATUTES,  628. 
"NEW  MANNY"    (harvester),  93. 
NEW  MEXICO  STATUTES,  639. 
NEWSPAPER— 

goodwill  of,  37. 

Infringement  of  name  of,  37,  164. 
NEW  YORK  STATUTES,  641. 
"NEW  YORK"    (glass  products),  93, 
"NICKEL"    (soap),  102. 
"NICKEL-IN"    (cigars),  102,  287. 
"NITRO,"  293. 
NOMINAL  DAMAGES— 

in  actions  at  law,  358. 
"NORMAL,"  287. 

NORTH  CAROLINA  STATUTES  AND  FORMS,  657,  664. 
NORTH  DAKOTA  STATUTES,  665. 
NOTICE— 

before  suit,  inadvisable,  370. 

defendant  not  entitled  to,  369. 

want  of,  no  defense,  369. 
"NO-TO-BAC"    (medicine),  102,  290. 
"NOURISHING  LONDON"    (stout),  93.      . 
NUMERALS— 

as  trademarks,  295. 


o 


"O.  F.  C."    (whiskey),  102,  299. 
OFFICIAL   BRAND— 

not  a  trademark,  446. 


848  INDEX. 

References  are  to  pages. 
OHIO  STATUTES,  668. 
OKLAHOMA   STATUTES,   669. 
"OLD  BOURBON"    (whiskey),  93. 
"OLD  COUNTRY"    (soap),  93. 
"OLD  CROW"   (whiskey),  102,  287. 
"OLD  INNISHOWEN"    (whiskey),  93. 
"OLD  LONDON   DOCK"    (gin),  93. 
"OLD  MILL"    (soap),  287. 
"OLD  PEPPER"    (whiskey),  67,  179. 
"OLD   SLEUTH  LIBRARY"  CASE,  163. 
"OLIVE"   (bicycles),  93. 
"OMEGA  OIL"    (liniment),  102,  269. 
"ONE  NIGHT  CURE,"  291. 
ONE'S  OWN  NAME— 

generally,  139. 

gratuitous  permission  to  use,  may  be  withdrawn  at  will,  175,  n.  14. 

injunction  against  use  of,  after  assignment,  148. 

revocation  of  license  to  use,  149. 

sale  of  right  to  use,  141. 
"ONLY  GENUINE"— 

improperly  used  by  one  not  having  exclusive  title,  336,  368, 

"OOMOO"    (cotton  goods),  116. 

"OPPORTUNITY  OF  COMPARISON,"  300. 

ORAL  REPRESENTATIONS— 

of  identity,  enjoined  when  false,  277. 

OREGON   STATUTES   AND   FORMS,   673,  676. 

"ORIENTAL   CREAM"    CASE,    273. 

"ORIGIN  OR  OWNERSHIP"— 
generally,  62,  63,  126. 

ORIGINALITY— 

not  a  test  of  trademark  right,  14,  63. 

"OSBORNE   HOUSE"  CASE,  179. 

"OSMAN"    (towels),  103. 

"OTAKA"    (biscuit),   103. 

OWNERSHIP— 

change  of,  public  should  be  notified  of,  24. 

need  not  be  indicated  in  connection  with  mark,  15. 

prerequisite  to  registration,  446. 
"OXFORD"    (bibles),   103. 


INDEX.  849 

References  are  to  pages. 

P 

PACKAGES— 

cannot  be  a  trademark,  112. 

empty,   restraint  of  competitor  from   buying,  260. 

fraudulent,  liability  of  dealer  in,  340. 

protection   in  use  of,  243. 
PACKING— 

method  of,  not  trademark,   113,  243. 
"PAIN-KILLER"    (medicine),  103. 

PALMING  OFF— 

enjoined,  38,  n.  15. 
"PANCOAST,"  287. 
"PARABOLA"    (needles),    103. 
"PARAFFIN"    (oil),  93. 
"PARAGON,"   287. 
"PARCHEESI"   (game),  93. 
"PARSON'S    PURGATIVE"    (pills),  93. 
PARTIES  DEFENDANT,   257,   336. 
PARTIES  PLAINTIFF— 

must  include  exclusive  licensee,  53,  334. 

where  trademark  is  incident  to  realty,  335. 

who  may  be,  136. 
PARTNER— 

when  trustee  of  mark  for  firm's  benefit,  334,  n.  30. 

PARTNERSHIP— 

administration  of  partnership  estate,  212. 

agreements   upon  dissolution,  199,  n.   85. 

effect  of  retirement  of  one  partner,  30. 

goodwill  of,  31,  204. 

injunction  by  withdrawing  partner  against  use  of  firm  name,  211. 

name  must  not  import  incorporation   (in  Illinois),  156. 

one  not  a  partner  cannot  secure  registration  of  mark,  454,  7?.   19 

rights  of  partners  In  trademarks  on  dissolution,  26,  211. 

sale  of  goodwill   on  dissolution  conveys  trademarks  without  spe- 
cial mention,  27. 

trademarks  of  individuals  merged  in  partnership  property,  30. 
"PASSING  OFF"— 

the   English   equivalent  of   unfair  competition,   44. 

PATENT— 

action  for  infringement  of: 

properly  joined  with  charge  of  trademark  infringement,  340. 
improperly  joined  with  charge  of  unfair  competition,  366,  n.  19. 
compared  with  trademarks,  11. 
54 


850  INDEX. 

Refereyices  are  to  pages. 

PATENTED  ARTICLE— 

dress  of,  protected  after  expiration  of  patent,  122. 

registration  refused  name  of  or  mark  for,  80. 

trademark  right  in  name  applied  to,  78,  108. 

trademark  right   in   name  applied  to,   not  abandoned  during  life 
of  patent,  82. 
"PATENT,"  "PATENTED,"   "PATENTEE"— 

unauthorized  use  of  words,  72,  75,  368. 
"PATENT  PLUMBAGO  CRUCIBLES,"  73. 
"PATENT   SOLID-HEADED  PINS,"  76. 
"PATENT  THREAD,"  77. 
"PECTORINE"   (medicine),  103. 
PENAL  LAWS  (see  Names  of  the  Several  States). 
PENNSYLVANIA  STATUTES  AND  FORMS,  677,  682. 
'PEPKO,"   293. 

"PEPTO-MANGAN"   (medicine),  103,  116,  287. 
"PERFECT  FACE   PASTE,"   93. 
"PERFECTION"   (mattresses),  103. 
PERIODICAL— 

infringement  of  name  of,    164. 

titles  of,  as  trademarks,  164. 
PERPETUAL  EXISTENCE   OF  TRADEMARKS,  18. 
"PERSIAN"    (thread),  103. 
PERSONAL  REPRESENTATIVE— 

goodwill  goes  to,  206. 
"PESSENDEDE"    (watches),   118. 
"PHILADELPHIA"    (beer),  93. 
PHILIPPINES— 

protection  of  registered  trademarks  in,  487. 
PHONOGRAPH  RECORDS— 

imitation  of,  244. 

PHOTOGRAPHS— 

improper  reproduction  of,  restrained,  225,  238. 

PICTURE— 

descriptive,  not  a  trademark,  70. 
PHYSICIAN— 

goodwill  of,  189. 
"PIGS  IN  CLOVER"    (puzzle),  103. 
"PILE   LECLANCHA,"   379. 

PLACES   OF  AMUSEMENT— 
names  of,  146. 


INDEX.  851 

* 

References  are  to  pages. 
PLAY  TITLE  AS  TRADEMARK,  1C9. 
PLEA— 

cannot  reach  defects  upon  face  of  bill,  372. 

in  avoidance  of  discovery,  396. 
PLEADING— 

in  the  action  at  law,  349. 

jurisdictional  facts  in  proceedings  in  federal  courts,  327. 

tendency  of  mark  to  deceive,  333. 
PLURALITY  OF  MARKS  FOR  SINGLE  ARTICLE,  306. 
"POCAHONTAS"    (coal).  93. 
"POROUS"    (plasters),   93. 
"PORTLAND"    (stoves),   103,   287. 
PORTO  RICO— 

protection  of  registered  trademarks,   487. 
PORTRAIT— 

unauthorized  publication  of,  225,  235,  236. 
"POST  OFFICE"    (directory),  93.. 
PRAYER  FOR  RELIEF— 

in  bill  in  equity,  366. 

PRELIMINARY  INJUNCTION   (see  Injunction,  Preliminary)  — 
appeal  from  order  granting,  389. 
denied  because  of  laches,  172. 
not  granted  on  ex  parte  affidavits  except  in  a  clear  case,  380. 

"PREMISES,  STOCK  IN  TRADE,  ETC."— 
goodwill  not  included  in,  193. 

PRESUMPTIONS— 

as  to  carelessness  of  consuming  purchaser,  300. 
none  in  favor  of  federal  jurisdiction,  327. 

"PRIDE"  (cigars),  103,  287. 

"PRIDE  OF  ROME,"  287. 

"PRIME  LEAF"   (lard),  93. 

PRINCIPAL— 

liable  for  infringement  by  agent,  338. 

PRINTS  AND  LABELS  (see  Forms;  Statutes,  Prints  and  Labels)  — 
adverse  decision,  appeal  from,  434. 
advertisement,  when  considered   a  print,  434. 
appeal  to  commissioner,  434. 
application,  431. 

for  renewal,  435. 

requisites  of.  435. 
articles  of  manufacture,  definition  of  the  words,  427. 


If/:'  J 


852  INDEX. 

References  are  to  pages. 

PKINTS   AND  LABELS— Continued. 

assignment  of,  435. 

certificate  of  registration,  427. 
renewal  of,  435. 
signature  to,  etc.,   435. 

commissioner,  appeal  to,  434. 

copies  of  print  or  label,  filing  of,  432. 

decisions  pertaining  to  registry  of  labels,  427. 

duration  of  term  of  registration,  434. 

examiner,  appeal  from  decision  of,  434. 

fees,   436. 

label,  definition  of  the  word,  434. 

pertinence  to  the  article  of  manufacture  required   in  prints,  434. 

print,  definition  of  the  word,  434. 

proprietor  or  agent  should  sign  the  application,  43L 

renewal  of  certificate  of  registration,  435. 

term  of  registration,  435. 
PRINTER— 

of  fraudulent  labels,  259. 

proof  of  intent  of,   260. 
PRIORITY  OF  APPROPRIATION— 

generally,  57,  63. 
PRIOR  RIGHT— 

burden  of  proving,  180,  n.  43. 

PRIOR  USE— 

controls  even  as  against  registrant,  460,  n.  35. 

no  defense,  unless  on  same  class,  374. 

void  because  accompanied  by  false  representations,  no  defense,  374- 
PRIVACY— 

right  of,  231. 
PRIVATE  LETTERS— 

publication  of,  restrained,  225. 
"PRIZE  MEDAL,"  93. 
PROBABILITY  OP  DECEPTION— 

as  test  of  infringement,  262. 

in  unfair  competition  cases,  262. 

PROCESS— 

secret,  219. 

PRODUCT— 

necessary  name  of,  108. 

PROFITS— 

and  damages  may  be  recovered  in  equity,  363. 
^  made  by  sale  of  infringing  article  may  be  recovered,  363. 

plaintiff  not  limited  to  profits  due  to  use  of  mark,  363. 


INDEX.  853 

References  are  to  pages. 

PROMOTER— 

unfair  competition  of,  148. 
PROPER  NAME— 

assignment  of,  cannot  be  re-assigned,  211,  n.  33. 

cannot  be  assigned  for  fraudulent   use  in  competition,  146. 

could   not  be  registered   under  act  of  March   3,  1881,   456. 

cannot  be  technical  trademark,  83,  .137,  138,  n.  30. 

defendant  using  his  own  in  good  faith,  143. 

defendant  using  in  manner  calculated  to  deceive,  144. 

fictitious,  does  not  disentitle  to  relief  In  equity,  148. 

not  trademarks   because   generic,   137. 

of  celebrity,  139. 

of  first  owner  of  mark  being  included   in  mark  does  not  render 
it  unassignable,  24,  n.  59. 

registration  of,   under  Act   of  1905,   471. 

the  right  to  assume,  139. 

the  use  of  one's  own  name,  137. 
"PROPERTY,  CREDITS  AND  EFFECTS"— 

goodwill   not  included   in^   194. 
PUBLIC  POLICY— 

as  to  covenants  not  to  re-engage,  201. 
PUBLICI  JURIS— 

extensive  sale  does  not  render  mark,  108. 

test  of  whether  word   has   become,   180. 

that  mark  has  become,  as  a  defense,  353. 

words  may  become,  by  laches,  120. 
"PUDDINE,"   103,  290. 
PUFFING— 

harmless  misrepresentation,  376. 
PUNITIVE  DAMAGES— 

allowed  where  no  actual  damage  proven,  358,  note. 

cannot  be  assessed  in  equity,  385. 

in   actions  at  law,   355. 
PURCHASER— 

degree  of  care  of,  264. 

presumptions  as  to  care  of,  263. 
"PURITY"   (oleomargarine),  94. 

Q 

QUACK  MEDICINES— 

trademarks  applied  to,  are  not  protected,  220. 
"QUALITY"— 

defined,  105,  n.  52. 

(inferiority  or  superiority)    of  infringing  goods  immaterial,  295. 
"QUEEN"    (shoes),  103,  160. 


854  INDEX. 

References  are  to  pages. 

R 

"RALEIGH,"   129. 
"RANIER"    (beer),  103. 
REAL-ESTATE    DEALER— 

mark  used  by,  not  a  trademark,  446. 
"RED  CROSS,"  Act  of  January  5,  1905,  805. 
"RED  CROSS  PLASTER,"  282. 
"RED"    (snuff),  94. 
REFEREE— 

reluctance  to  disturb  findings  of,  in  contempt  cases,  398. 
REFILLING— 

burden  of  proof  in  cases  of,  274. 

enjoined  even  when  done  at  the  customer's  request,  274. 

packages  with  spurious  goods,  273. 
REFITTING— 

trademarked  articles,   274. 
"REGISTERED  TRADEMARK"— 

falsely  imprinting,  77. 
REGISTRATION    (see  Forms;    Statutes;    Trademark  Rules  of  Patent 
Office)  — 

advantages  of,  320. 

a  prerequisite  to  trademark  right  under  English  statute,  17. 

as  evidence  of  extent  of  registrant's  claim,  322. 

by  aliens,  413,  n.  7,  492. 

by  one  partner  through  mistake,  334,  n.  30. 

cannot  validate  mark  otherwise  invalid,  59. 

certificate  will  issue  to  assignee,  476. 

citizenship   of  applicant   immaterial,   468. 

class  of  goods  must  be  stated,  468. 

constitutionality  of  act  of  1905,  315. 

date  of  adoption  stated  in  application  not  conclusive,  325. 

defense  that  it  does  not  make  valid  trademark  of  mark  common 
to  the  trade,  353. 

description  of  essential  features,  451,  n.  13. 

disadvantages  of,  322. 

does  not  preclude  third  party,  460,  n.  35. 

doubts  as  to  similarity  resolved  against  applicant,  454,  n.  20. 

features  of  mark   not  included  in,  abandoned,   322. 

federal,  advantages  of,  320. 

function  of  commissioner  in  applications  for,  as  to  title,  457,  n.  27. 

granted  only  for  class  in  which  mark  is  actually  used,  451,  n.  12. 

granted  only  to  valid  trademarks,  446,  n.  1. 

in  color,  452,  n.  14. 

invalid  Federal  Statutes,  313. 


INDEX.  •  855 

References  are  to  pages. 
REGISTRATION— Continued. 

is  record  of  adoption  of  trademark,  320. 

jurisdiction  of  congress  concerning,  314. 

limits  registrant  to  matter  claimed,  322. 

mode  of  application  must  be  stated,  452,  n. 

must  be  pleaded,  350. 

no  institution  of  suit  for  trademark  infringement  without,  under 
English  act,  313. 

not  a  grant  of  right  or  privilege,  321. 

not  a  means  of  acquiring  trademark,  57,  60,  453,  n.  16. 

not  conclusive  as  to  right  to  trademark,  460,  n.  35. 

not  granted  for  use  on  "fancy  goods,"  451,  n.  12.  ' 

of  corporate  names,  456,  n.  25. 

of  defendant's  mark,  not  a  defense,  372. 

of  name  of  celebrity,   239,  n.  13. 

of  name  of  or  mark  for  patented  article,  refused,  447. 

of  mark  common  to  trade,  460,  n.  35. 

of  mark  of  voluntary  association  of  manufacturers,  refused,  419, 
447. 

of   partnership    mark,    granted     only    on     application    of    partner, 
454,  n. 

of  proper  name  does  not  create  trademark  right,  60. 

of  trademark,  does  not  cure  objection  of  its  being  colorable  imi- 
tation of  another  mark,  321. 

only  prima  facie  evidence  of  ownership,  321,  n.  15. 

ownership  a  prerequisite,  448,  n.   4. 

pleading,  form  of,  747. 

prima  facie  evidence  of  ownership,  321,  n.  15. 

refused  coat-of-arms  of  the  United  States,  493. 

refused    descriptive    words    reproduced     in     letters    from   foreign 
language,  119. 

refused  form,  material  and  color,  418. 

refused   generic  words,  417. 

refused  geographical  names,  455,  n.  24. 

refused  name  of  patented  article,  447. 

refused  picture  and  word  not  true  alternatives,  454,  n. 

refused  proper  and  geographical  names  joined,  456,  n.   25. 

remedies  conferred  by,  61. 

right   to,    not    concluded     by     registrability     in     foreign     country. 
449,  n.  6. 

state   (see  Statutes  of  the  several  States). 

the   valid    federal    statutes    (see   Acts   of   1881    and    1905,   in   Ap- 
pendix). 

under  act  of  1870  was  equivalent  to  public  use,  57. 

under  English  statute  constructive  user  of  trademark,  57. 

use  of  fac-similes  in,  452. 


856  INDEX. 

References  are  to  pages. 

EEGISTEATION— Continued. 

validity  of  present  federal  statute,  315. 

value  of,  59,  60,  n.  25,  449,  n.  7. 

when  refused,  fee  not  refunded,  453,  n.  17. 

REISSUE  OF  PATENT— 

extends  life  of  trademark  applied  to  patented  article,  83. 

RELATIVE  PROTECTION  GIVEN  BY  PATENTS  AND  TRADE- 
MARKS, 13. 
RELIEF— 

in   equity,   379. 

"REMINGTON,"  60,  note. 

REMOVAL  OF   BUSINESS— 

to  plaintiff's  locality,  as  proof  of  fraud,   272. 
RENEWAL  PRIVILEGE  UNDER  ACT  OF  1905,  19. 
REPLACEMENT— 

of  parts  of  trademarked  articles,  274.  » 

RES  ADJUDICATA— 

none  created  by  decision  of  court  of  foreign  country,  378. 
RESCISSION— 

of  contract  for  sale  of  goodwill,  for  vendor's  fraud,  215. 
RESEMBLANCE—  \ 

inspection  by  court  as  test  of,  261,  300. 

need  not  be  such  as  to  deceive  purchasers  having  opportunity  of 
comparison,  300. 
RESTRAINT  OF  TRADE— 

combination  in,  201. 

contract  relating  to  trade  secret  is  not  in,  219. 

in  sale  of  goodwill,  201. 
RETAIL  DEALER—  U 

costs  may  not  be  imposed  against,  405,  n.  19.  11 

REVOCATION  OF  LICENSE  TO  USE  NAME,  149.  j^ 

REVIVAI^ 

of  action  against  deceased  infringer's  representative,  335. 
RHODE   ISLAND   STATUTES   AND   FORMS,   683,   687.  . 

"RICHARDSON'S  PATENT  UNION"    (machine),  94.  t 

RIGHT  OF  PRIVACY,  231. 
"RISING  SUN"   (stove  polish),  103. 
"ROACHSAULT,"  85. 

"ROBERT'S   PARABOLA  GOLD-BURNISHED   SHARPS,"  287. 
"ROGER  WILLIAMS"    (cloth),  103,  139. 
"ROGERS,"   287. 


INDEX.  857 

References  are  to  pages. 

"ROSE"   (vanilla  extract),  94. 

"ROSEBUD"    (canned   salmon),  103. 

"ROSENDALE"   (cement).  94. 

"ROUGH  ON  RATS,"  292. 

"ROYAL"    (baking  poowder),  103. 

"ROYAL  BLUE"    (carpet  sweeper),  103. 

"ROY  WATCH  CASE  CO.."  288. 

ROYALTIES  ON  ARTICLES  MADE  BY  SECRET  PROCESS,  230. 

"R.  P.  HALL,"  AS  TRADEMARK,  141. 

"RYE  AND  ROCK"  (liquor),  94. 


"SAFETY"  (powder),  94. 
"SAGAFOAM,"  293. 
SALE— 

of  business,  conveys  trademarks  used  therein.  25. 

of  trademarks,  22. 

SALES— 

diminution  of,  as  evidence  of  damage,  360. 

evidence  of  extent  of,  394. 
SALOON— 

goodwill  of,  188. 
"SANITARY"    (filter),  94. 
"SANITAS,"   114.    288. 
"SAPOLIO"   (scouring  brick),  103,  288. 
"SAPONIFIER"   (concentrated  lye),  103. 
"SAPPOTA  TOLU,"  291. 
"SARSAPARILLA  AND   IRON"  94. 
"SATININE"   (starch  and  soap),  94. 
"SATIN  POLISH"   (boots  and  shoes),  91. 
"SATIN   SKIN,"   293. 

"SAWYER'S   CRYSTAL  BLUE  AND  SAFETY  BOX."  288. 
"S.  B.,"  291. 

"SCHIEDAM    SCHNAPPS/'   94. 
SCIENTER,  255. 

SEARCH  WARRANTS— 

under  act  of  1876.  445.  n.  1. 

under  local  statutes   (see  Statutes  of  the  several  States). 

SECONDARY  MEANING,  156. 


858  INDEX. 

References  are  to  pages. 

SECTION  3449,  R.  S.  U.  S.,  343. 
SECRET— 

in  trade,  219. 
SECRET  PREPARATION— 

name  of,  as  trademark,  219. 
SECRET  PROCESS.  34. 
"SELECTED  SHORE"   (mackerel),  94. 
SELECTORS— 

of  merchandise,  may  have  trademarks,  55. 

"SEFTON"    (cloth),  103. 
"SELF-WASHER"    (soap),   123. 

SERVANT— 

liable  for  infringement,  338. 
"SINGER"    (sewing  machine),  94,  109. 

SHAPE— 

infringement  of,  restrained,  250. 
"SHAWKNIT"  (stockings),  103,  288. 
"SHERLOCK  HOLMES"  CASE,  171. 
SHERMAN  ANTI-TRUST  ACT— 

claim  for  damages  under,  cannot  be  joined  with  bill  to  restrain 
unfair  competition,   366,  n.   19. 
"SHREWSBURY,  MARSHALL  &  CO.  PATENT  THREAD,"  288. 

SIGNS— 

fraudulent,  when  enjoined,  277. 
"SILVER  GROVE"    (whiskey),  104, 
"SIMPLEX,"  288. 
"SINGER"   (sewing  machines),  81. 

SINGLE  SALE— 

when  sufficient  to  secure  injunction,  393,  n.  13. 
"SIR  J.  CLARK'S  CONSUMPTION  PILLS,"  368. 
"SIX  LITTLE  TAILORS,"  104,   288. 

SIZE— 

imitation  of,  restrained,  250. 

no  trademark  in,  250. 
SLANDER— 

in  trade,   46. 

of  title  to  trademark,  49. 
"SLATE  ROOFING"    (paint),  104. 
"SLICED   ANIMALS"    (toys),"  104. 
"SNOWFLAKE"    (crackers),    94. 
"SOCIAL  REGISTER"   (directory),  104,  167,  291. 


INDEX.  859 

References  are  to  pages. 

"SOLE  PROPRIETOR"— 

use  of  words  enjoined,  336. 
"SOMATOSE"    (meat  extract),  94,  114,  n.  41. 
SOUTH  CAROLINA  STATUTES,  688. 
SOUTH  DAKOTA  STATUTES,  688. 
"SOUTHERN  COMPANY,  ST.   LOUIS,"   288. 
"SOROSIS,"  288. 
SPECIFIC  PERFORMANCE— 

of  contract  for  sale  of  goodwill,  191. 
"SPLENDID"   (flour),  94. 
"STANDARD  A"    (cigars),  94. 
STAGE   LINE— 

goodwill  of,  188. 
"STAR"    (tobacco,  etc.),  104,  288. 
"STARK,"   288. 
STATE   PENAL   LAWS,   345. 
STATE  REGISTRATION— 

advantages  of,  332. 
STATUTE  OF  FRAUDS— 

agreement  not  to  engage  in  rival  business  does  not  come  within, 
200. 

STATUTE  OF  LIMITATIONS— 
in  case  of  laches,  175. 

STATUTES:    ACT   OF  1870,  341. 

STATUTES:    ACT    OF    1876,    341. 

STATUTES:   ACT  OF  MARCH  3,  1881— 
action: 

by   commissioner   on   application    (sec.    3),   454. 

for  damages    (sees.  7,  9),  459. 

for  an  injunction    (sec.  7),  459. 

jurisdiction  of  United  States  courts  in  an   (sec.  7),  459. 

when  barred    (sec.  8),  460. 
appellate  jurisdiction   of   United   States  courts    (sec.   7),   459. 
applicant: 

citizenship  of,  to  be  recited    (sec.  1),  450. 

domicile  of,  to  be  recited   (sec.  1),  450. 

name  of,  not  registrable   (sec.  3),  454. 

name  of,  to  be  specified  in  the  application   (sec.  1),  450. 

statement  of,  to  recite  what  (sec.  1),  450. 
application: 

action  on  same  by  the  commissioner  (sec.  3),  454. 

conflicting  with  another   (sec.  3),  454. 


860  INDEX. 

References  are  to  pages. 

STATUTES    (Act  of  1881)— Continued. 

length  of  time  of  use  of  mark,  to  be  recited  in  (sec.  1),  452. 
must  be  accompanied  by  a  written  declaration  (sec.  2),  454. 
must  recite  what  (sec.  1),  450. 
time  of  receipt  of,  to  be  recorded   (sec.  3),  454. 
article: 

if  injurious,  an  action  for  damages  or  injunction   is  barred 

(sec.  8),  460. 
not  manufactured   in   this   country,  term  of  registration   for 

(sec.    5),   459. 
assignment,   commissioner   to   prescribe   forms  and  rules  for 
(sec.  12),  462. 
bars: 

to  an  action  for  damages  or  injunction   (sees.  8,  11),  460. 
to  registration    (sees.  1,  2,  3),  446. 
business,  if  unlawful,  bars  an  action  for  damages  or  injunction, 

(sec.    8),    460. 
certificates  of  registration: 

how  and  when  issued    (sees.  4,  13),  458,  462. 
use  of  same  in  courts  as  evidence   (sec.  4),  458. 
citizenship  of  applicant: 

as  affecting  the  right  to  register  (sec.  1),  446. 
to  be  specified  in  the  application    (sec.   1),  446. 
claim,  presumptive  lawfulness  of,  to  be  decided  by  the  commis* 

sioner    (sec.    3),    454. 
class  of  merchandise  to  be  recited  in  the  application  (sec.  1),  450. 
commerce  with  foreign  nations  or  Indian  tribes,  use  of  trademark 

in,  necessary  to  registration   (sees.  1,  2,  3),  446. 
commissioner: 

action  on   application    (sec.   3),  454. 

to  decide  presumptive  lawfulness  of  claim   (sec.  3),  454. 

to  prescribe  regulations  for  registration   (sec.  1),  446. 

to  prescribe  rules  and  forms  for  assignments  and   transfers, 

(sec.    12),    462. 
to  sign  certificates  of  registration    (sec.  4),  458. 
common  law  and  equitable  rights: 

not  abridged   by  expiration  of  term  of  certificate  "(sec.   11), 

461. 
not  abridged  by  statute   (sec.  10),  461. 
compensation,  registrant  aggrieved  may  recover   (sec.  7),  459. 
conflicting   applications    (sec.    3),    454. 

convention  with  a  foreign  power  as  conferring  the  right  to  reg- 
ister  (sec.  3),  454. 
confusion  of  the  public  mind  by  similarity  of  marks  bars  regis- 
tration   (sec.  3),  454. 


INDEX.  861 

References  are  to  pages. 

STATUTES    (Act  of  1881)— Continued, 
copies: 

of  printed  speciflcatious  to  be  kept  on  record  (sec.  4),  458. 

under  official  seal   to  be  evidence    (sec.  4),  458. 
copying   and    using   registered   trademark   damages   for    (sec.    7), 

459. 
counterfeiting,  damages  for   (sec.  7),  459. 

courts  of  equity,  practice  to  be  followed  in  oflSce  action  on  con- 
flicting applications    (sec.  3),   454. 
courts  of  the  United  States,  jurisdiction  of  (sec.  7),  459. 
damages : 

action  for,  when  barred    (sec.  8),  460. 

for    affixing    fraudulent   trademark    to    merchandise    (sec.    7), 
459. 

for  false  or  fraudulent  registration    (sec.  9),  461. 

for  wrongful  use  of  registered  trademark   (sec.  7),  459. 
deceit  of  the  public: 

action  to   defend   trademark  so  used^   not  maintainable    (sec. 
8),   460. 

by  similarities  in  marks,  bars  registration    (sees.  2,  3),  454. 
declaration: 

must  be   in  writing    (sec.   2),   454. 

must  be  verified  by  whom  (sec.  2),  454. 

must  contain  what  (sec.  2),  454. 

when  false  or  fraudulent,  damages  for   (sec.  9),  461. 

with   a    foreign    power,   as   conferring    the   right    to    register 
(sec.  3),  454. 
description: 

must  truly  represent  the  mark  (sec.  2),  454. 

of  the  goods  required    (sec.  1),  446. 

of  the  mark  required   (sec.  1),  446. 
domicile  of  applicant  must  be  recited  in  the  application   (sec.  1), 

446. 
duration  of  certificate  (sec.  5),  459. 
equitable   rights    not    affected   by   statute,   or   expiration   of   term 

(sees.  10,  11),  461. 
equity: 

aggrieved   registrant   may   resort   to    (sec.   7),   459. 

courts  of,  practice  followed  in  interference  cases  (sec.  3),  454. 
evidence: 

copies  under  seal  to  be  received  as   (sec.  4),  458. 

of  ownership,  registration  to  be  prima  facie    (sec.   7),  459. 

of   registry    (sec.    4),   458. 
expiration  of  term  of  certificate  does  not  abridge  common-law  or 
equitable   rights    (sec.    11),    461. 


862  INDEX. 

References  are  to  pages. 

STATUTES    (Act  of  1881)— Continued. 
facsimiles: 

of   trademarks  to  be  filed    (sec.  1),  446. 
presented,  must  truly  represent  the  mark   (sec.  2),  454. 
false  registration,   damages  for    (sec,   9),   461, 
fees: 

for  registry,  and  how  payable    (sec.   1),   446. 
formerly  paid  with  intent  to  procure  registration  (sec.  6),  459. 
foreign  countries,  residents  of  may  register  when  (sees.  1,  3),  446. 
foreign   nations   or   Indian   tribes,   trademarks  used   in   commerce 

with,   along  registrable    (sees.   1,   2,   3),   446-457. 
foreign  power  convention  with,  as  conferring  right  of  registration 

(sec.   3),  454. 
former   rights   and   remedies   preserved    (sec.    10),   461. 
forms   for   assignments    to    be   prescribed   by   commissioner    (sec. 

12),   462. 
fraud  in  obtaining  registration  bars  an  action   (sec.  8),  460. 
fraudulent: 

declaration  and  registration,  damages  for   (sec.  9),  461. 
trademark,   damages  for   affixing   same   to   merchandise    (sec. 
7),  459. 
goods,  particular  description  of  same,  to  be  recited   (sec.  1),  446. 
identity  with  other  trademarks,  bars  registration  when    (sees.   2, 

3),  454. 
imitation  of  registered  trademark,  penalty  for    (sec.  7),  459. 
Indian  tribes   or   foreign   nations,   trademarks  used   in  commerce 

with,  alone  registrable  (sees.  1,  2,  3),  446-457. 
infringement,  remedy  for    (sec.  7),  459. 
injunction: 

action  for,  when  barred   (sec.  8),  460. 

against  the  wrongful  use  of  a  registered  trademark   (sec.  7), 
459. 
interference  practice,  to  follow  the  rules  of  United  States  courts 

of  equity    (sec.   3),  454. 
issue  of  certificates  of  registration    (sec.   4),  458. 
jurisdiction,  original  and  appellate,  of  United  States  courts   (sec. 

7),  459. 
lawfulness  of  claim  to  trademark  to  be  decided  by  commissioner 

(sec.  3),  454. 
length  of  time  of  use  of  mark  to  be  recited   (sec.  1),  446. 
location  of  applicant  to  be  specified    (sec.  1),  446. 
manufacture  of  articles  abroad,  registration  for   (sec.  5),  459. 
merchandise,  class  of  to  be  recited    (sec.  1),  446. 
mistake  or  confusion  in  the  public  mind,  caused  by  similarity  of 

trademarks,  bars  registration    (sec.  3),  454. 
mode  of  affixing,  to  be  recited    (sec.  1),  446. 


INDEX.  803 

References  are  to  pages, 

STATUTES    (Act   of  1881)— Continued, 
name  of  applicant: 

not  registrable    (sec.   3),  454. 

to  be  specified   in  the  application   (sec.  1),  446. 
oath  to  declaration,  how  and  by  whom  made    (sec.  2),  454. 
ownership,  registration  to  be  prima  facie  evidence  of  (sec.  7),  459. 
penalty: 

for   false  or   fraudulent  registration    (sec.   9),  4G1. 

for  imitation  of  trademark    (sec.  7),  459. 
printed  copies  of  specification  to  be  kept  of  record   (sec.  4),  458. 
receipt  of  application,  time  of  to  be  recorded   (sec.  3),  454. 
recording: 

of  time  of  receipt  of  application    (sec.  3),  454. 

of  transfers  of  right  of  use  (sec.  12),  462. 

records    of    trademarks,   statements,   declarations,   etc.,    to   be 
kept    (sec.   4),   458. 
registration: 

as  a  condition  precedent  to  registration  abroad   (sec.  13),  462. 

authorized  when    (sec.   1),  446. 

bars  to    (sees.   1,  2,  3),  446,  457. 

by  residents  of  foreign  countries   (sees.  1,  3),  446,  457. 

certificates  of,  how  and  when  Issued    (sees.  4,  13),  458,  462. 

certificates  of  use  of  same  in  courts  as  evidence  (sec.  4),  458. 

expiration  of  term  of,  does  not  abridge  common-law  or  equit- 
able  rights    (sec.   11),   461. 

fee  for   (sees.  1,  6),  446,  459. 

how  effected    (sec.  1),  446. 

marks  are  registrable   (sec.  5),  459. 

obtained  by  false  or  fraudulent  representations,  damages  for 
(sec.   9),   461. 

records  of,  to  be  kept   (sec.  4),  458. 

renewal  of,  can  be  made  when    (sec.  5),  459. 

restricted  to  marks  used  in  foreign  or  Indian  commerce  (sees. 
1,    2,   3),    446,    457. 

right  to,  as  affected  by  citizenship  of  applicant   (sec.  1),  446. 

right    to,   as   conferred   by   treaty   convention,   or   declaration 
with   a  foreign   power    (sec.   3),   454. 

right  of  action  secured  thereby    (sec.   7),  459. 

rules  for,  to  be  prescribed  by  the  commissioner   (sec.  1),  446. 

to  be  prima  facie  evidence  of  ownership    (sec.  7),  459. 

use  in  foreign  and  Indian  commerce  a  prerequisite  to    (sees. 
1,   2,  3),   446,  457. 
regulations  and  rules  to  be  prescribed  by  the  commissioner  (sees. 

1,   12),  446,   462. 
remedy   for   infringement    (sec.    7),   459. 
renewal   of  registration    (sec.   5),   459. 


864  INDEX. 

References  are  to  pages. 

STATUTES    (Act  of  1881)— Continued. 

reproduction  and  use  of  registered  trademark,  penalty  for    (sec. 

7),   459. 
resemblance  to  other  marks  must  be  avoided   (sees.  2,  3),  454. 
restrictions: 

on  actions  for  damages  or  an  injunction   (sec.  8),  460. 

on  actions  for  infringement,    (sees.  8,  11),  460,  461. 

on  registration   (sees.  1,  2,  3),  446  457. 
right  to  use  the  mark  must  belong  exclusively  to  the  applicant 

(sec.  2),  454. 
rights  at  common  law  and  equity  not  abridged: 

by  expiration  of  the  term  of  registration    (see.  11),  461. 

by  the  enactment  of  the  statute   (sec.  10),  461. 
rules  and  regulations,  to  be  prescribed  by  the  commissioner  (sees. 

11,  12),   461,   462. 
similarity  to  other  marks  bars  registration,  when    (sees.   1,   12), 
-       446,  462. 
specifications,   printed   copies  of,   to   be  kept  of   record    (sec.   4), 

458. 
statement  of  applicant: 

to  recite  what    (sec.   1),  446. 

recording  of    (sec.   4),  458. 
terms  of  registration: 

duration    of    (see.    5),    459. 

expiration    of,    does    not    abridge    common-law    or    equitable 
rights    (sec.  10),  461. 

limitation  of  (sec.  5),  459. 

renewal   of    (sec.   5),   459. 
time  of  receipt  of  application  to  be  recorded   (see.  3),  454. 

of  use  to   be  recited    (see.  1),  446. 
transfers  of  the  right  of  use,  how  regulated   (sec.  12),  462. 
treasury  department,  deposit  of  trademark  in,  466. 
treaties  as  conferring  the  right  of  registration   (see.  3),  454. 
United   States: 

citizens   of,   may  obtain   registration    (see.   3),   454. 

courts  of,  to  have  jurisdiction,  when  (sec.  7),  459. 
use: 

if  an   unlawful  business,   bars   an  action    (sec.   8),   460. 

if    wrongful,    common-law    and    equitable    rights    unimpaired, 
(sec.  10),  461. 

if  wrongful  or  unlawful,  bars  registration   (sec.  3),  454. 

length  of  time  of,  to  be  recited   (sec.  1),  446. 

right  of,  must  be   exclusive   in  the  applicant    (sec.   2),   454. 

right  of,  transfers   of    (sec.   12),   462. 

unlawful,  of  trademark,  damages  or  injunction   (sec.  7),  459. 
verification  of  declaration,  how  and  by  whom  made  (sec.  2),  454. 


INDEX.  865 

References  are  to  pages. 

STATUTES:      ACT  OF   FEBRUARY  20.   1905. 

abandoned  trademarks,  action  may  not  be  brought  on    (sec.  21), 

483. 
action: 

by   commissioner   on   application    (sec.   6),   473. 

for  damages    (sees.   16,   19,  25),  480,  481,  484. 

for   an    injunction    (sec.    19),    481. 

jurisdiction   of  United   States  courts  in  an    (sees.   17,   18,  19. 

20),  481,  482. 
when  barred    (sees.    21,  28),  323.   483,   485. 
act  of  1881,  rights  of  registrants  under    (sees.  12,  30),  477,  487. 
"affixed"  defined    (sec.  29).  486. 
amendments   to    applications    filed    under   act   of    1881    (sees.    14, 

24),   478,   484. 
appeals: 

fees  for   (sees.  8,  14),  475,  478. 

to  the  commissioner  of  patents   (sees.  7,  8,  13),  474,  475,  478. 
to  the  court  of  appeals  of  the  District  of  Columbia   (sec.  9), 
475. 
patent  practice  and  procedure  to  govern   (sec.  9),  475. 
appellate  jurisdiction  of   United   States  courts    (sec.   17),  481. 
applicant: 

"applicants"    defined    (sec.    29),    486. 
citizenship  of,  to  be  recited    (sec.  1),  468. 
domicile  of,  to  be  recited    (sec.  1),  468. 
location  of,  to  be  recited    (sec.  1),  468. 
name  of,  to  be  recited    (sec.   1),  468. 
statement  of.   to  recite  what    (sec.  1),  468. 
who   may  apply  for  registration    (sec.   1).  468. 
applications: 

action  on  same  by  the  commissioner   (sec.  6),  473. 

conflicting    (sec.    7),    474. 

date  of,  in  foreign  country  must  be  stated  when   (sec.  2),  469. 

examination  of  (sec.  6),  473. 

fees   on   filing    (sees.    1,   14),    468,   478. 

filed   under  the  act  of  1881   may  be  amended    (sees.  14,    24). 

478,   484. 
length  of  time  of  use  of  mark  to  be  recited  in  (sec.  1),  468. 
may  be  assigned    (sec.   10),   476. 
must  be  addressed  to  the  commissioner  of  patents    (sec.   1), 

468. 
must  be  accompanied  by  a  drawing    (sec.  1),  468. 
must  be  accompanied  by  a  written  declaration   (sec.  2),  469. 
must  be  accompanied  by  specimens  of  the  trademark  (sec.  1), 

468. 
must  be  filed  in  the  patent  office    (sec.  1),  468. 
55 


866  INDEX. 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued. 

must  be  in  writing   (sec.  1),  468. 
must  be  signed  by  the  applicant    (sec.  1),  468. 
must   recite   what    (sec.   1),   468. 

must  state  how  trademark  is  applied  or  aflBxed  to  the  goods 
(sec.   1),   468. 
article,    if    injurious,    an    action    for    damages    or    injunction    is 

barred    (sec.   21),   483. 
assignments: 

applications  for  registration  may  be  assigned   (sec.  10),  476. 

fees   for   recording    (sec.    10),    476. 

must  be  acknowledged  according  to  laws  of  country  or  state 

in  which  executed   (sec.  10),  476. 
must   be   in   connection   with   the   good   will   of   the   business 

(sec.  10),  476. 
must  be  in  writing   (sec.  10),  476. 
record  of  assignments  to  be  kept  in  the  patent  office  (sec.  10), 

476. 
shall    be    void    unless    recorded    in    the    patent    office    w;thin 

three  months   (sec.  10),  476. 
trademarks   may   be  assigned    (sec.   10),   476. 
bars: 

to  action  for  dama-os  or  injunction  (sees.  21,  28),  323,  483,  485. 
to  registration    (sees.   1,   2,   4,   5),   468,   471. 
business,  if  unlawful,  bars  an  action  for  damages  or  injunction 

(sec.  21),  483. 
cancellation,   proceedings  for    (sees.   13,   22),  478,   483. 
certificates  of  registration: 

in  case  of  foreign  registration,  shall  cease  when  the  foreign 

registration   expires    (sec.  12),  477. 
issued  under  the  act  of  1881,  may  be  renewed  under  the  act 

of  Feb.   20,  1905    (sec.   12),   477. 
issued   under   the   act  of   1881,   shall    remain   in   force    (sees 

12,   30),   477,   487. 
may  be  canceled   (sees.  13,  22),  478,  483. 
may  be  issued   to  the  assignee   (sec.   11),  476. 
may   be   renewed    (sec.   12),   477. 

shall  bear  the  seal  of  the  patent  office   (sec.  11),  476. 
shall  be  signed  by  the  commissioner  of  patents  (sec.  11),  476. 
shall  not  be  issued  to  foreign  applicants  until  they  have  ob- 
tained registration  in  country  of  residence    (sec.  4),  471. 
shall  remain  in  force  not  more  than  20  years   (sec.  12),  477. 
shall  state  date  of  application    (sec.   11),  476. 
use  of  copies  of  in  court  as  evidence   (sec.  11),  476. 

citizenship: 

as  affecting  right  to  register    (sec.  1),   468. 


INDEX.  867 

References  are  to  pages, 

STATUTES  (Act  of  1905)— Continued. 

of  applicant  to  be  recited    (sec.  1),  468. 
class  of  merchandise  to  be  recited  in  application   (sec.  1),  468. 
coats  of  arms  not  registrable   (sec.  5),  471. 
commerce: 

between  States   (sec.  1),  468. 

foreign    applicants    need    not   state    that    the    trademark    has 
been  used   in  commerce  with   the  United   States  or   among 
the  States  thereof   (sec.  2),  469. 
with   foreign   nations    (sec.    1),   468. 
with    Indian   tribes    (sec.   1),   468. 
commissioner: 

action  on  application  (sec.  6),  473. 
appeals    to    (sec.    8),   475. 

jurisdiction  of,  to  cancel  registrations   (sees.  13,  22),  478,  483. 
may  refuse  to  register  interfering  marks,  when   (sec.  7),  474. 
to  decide  presumptive  lawfulness  of  claim   (sec.  6),  473. 
to  prescribe  regulations  for  registration   (sec.  26),  484. 
to  sign  the  certificates  of  registration    (sec.  11),  476. 
common-law   and    equitable   rights   not   abridged   by  statute    (sec. 

23),   483. 
conflicting  applications    (sec.    7),   474. 

confusion  of  the  public  mind  by  similarity  of  marks  bars  regis- 
tration   (sec.    5),    471. 
constitutionality   of,   315. 

contempt,  action  for  violating  injunction    (sec.  20),  482. 
convention  with  a  foreign  power  as  conferring  the  right  to  reg- 
ister  (sees.  1,  4),  468,  471. 
copies: 

of   actual   trademark   or   facsimiles    required    from    applicant 

(sec.   1),   468. 
of  printed  specifications  to  be  kept  of  record    (sec.  11),  476. 
of    records    of    injunction    proceedings    furnished    to    courts 

applying  for  same    (sec.  20),  482. 
of  publications,  prices   (sec.  14),  478. 

of  records  under  official  seal  to  be  evidence  (sec.  11),  476. 
copying  and  using  registered  trade-marks: 
damages  for   (sees.  16,  19),  480,  481. 
restraint  of    (sec.   19),  481. 
counterfeiting,  damages  for   (sec.  16),  480. 
courts  of  the  United  States,  jurisdiction  of   (sees.  16,  17,  18,  19), 

480,   481. 
damages: 

action  for,  when  barred    (sees.  21.  28),  483,  485. 
for   affixing   fraudulent   trademark   to  merchandise    (sec.   16), 
351,    480. 


868  INDEX. 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued. 

for   false  or   fraudulent   registration    (sec.   25),   484. 

for  wrongful  use  of  registered  trademarks   (sees.  16,  19),  480, 

481. 
may  be   increased    (sees.   16,   19),   480,   481. 
deceit  of  the  public: 

action  to   defend  trademark   used   in^   not  maintainable    (sec. 

21),  483. 
by  similarity  in  marks,  bars  registration    (sec.   5),  471. 
deceptive  trademarks,  action  under,  may  not  be  brought  (sec.  21), 

483. 
declaration: 

may   be  verified,   before  whom    (sec.  2),  469. 
must  be   in  writing    (sec.   2),  469. 
must  be  verified,  by  whom   (sec.  2),  469. 
must   contain    what    (sec.    2),    469. 

for   foreign   applicants    (sec.   2),   469. 
under  10-year  proviso   (sec.  5),  471. 
when  false  or  fraudulent,  damages  for   (sec.   25),  484. 
definitions    of    "aflGixed,"    "applicant,"    "owner,"    "person,"    "regis- 
trant,"  "States,"   "trademark,"   "United   States"    (sec.   29),   486. 
description: 

must   truly   describe   the   mark    (sec,    2),    469. 
of  the  goods  required    (sec.  1),  468. 
of  the  mark  required    (sec.  1),  468. 
descriptive  trademarks,  not  registrable   (sec.  5),  471. 
destruction  of  infringing  trademarks    (sec.   20),  482. 
domicile  of  applicant  must  be  recited  in  the  application  (sec.  1), 

468. 
drawing  of  the   trademark   required    (sec.   1),  468. 
duration  of  the  certificate  of  registration    (sec.  12),  477. 
equity,    aggrieved    parties    may    resert    to    (sees.    17,    19,    22,    23), 

481.  483. 
evidence: 

copies  under  seal  to  be  received  as    (sec.  11),  476. 
of  ownership,  registration  to  be  prima  facie    (sec.   16),  480. 
of  registry    (sec.  11),  476. 
examination   of   applications: 

applicant  to  be  notified  of  the  result  of   (sec.   6),  473. 
commissioner  of  patents  to  cause   (sec.  6),  473. 
facsimiles  of  trademarks,  when  to  be  filed   (sec.  1),  468. 
false  registration,  damages  for    (sec.   25),  480. 
fees: 

additional   fee   not  required   for   applications   pending  at  the 

date  of  passage  of  this   act   (sec.   14),  478. 
for   copies    (sec.   14),   478. 


INDEX.  869 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued. 

for  recording  assignments    (sec.  14),  478. 

for  registration  or  renewal    (sees.  1,  14),  468,  478. 

if  paid  by   mistake  may  be  refunded    (sec.  15),  479. 

on  appeal  to  the  commissioner  of  patents   (sees.  8,  14),  475, 

478. 
on  filing  notice  of  opposition    (sec.  14),  478. 
flags  or  coats  of  arms  not  registrable    (sec.  5),  471. 
foreigners: 

entitled    to    date   of   application    in    country    of    residence    in 

certain  cases    (sec.  4),  471. 
must  designate  representative  in  the  United   States    (sec.  3), 

470. 
must  first  register  in  country  of  residence  (sees.  2,  4),  469,471. 
must    give    date    of    registration    in    country   of    residence   or 

date  of  application  therefor    (sec.  2),  469. 
must  reside  in  a  country  affording  similar  privileges  to  the 

citizens  of  the  United   States    (sec.  4),  471. 
need  not  state  that  mark   has  been  used   in  commerce  with 
the  United  States  or  among  the  States  thereof  (sec.  2),  469. 
notices   for,   may   be   served   on   their   representatives    in   the 

United   States    (sec.  3),  470. 
when  entitled  to  register   (sees.  1,  2,  4),  468,  469,  471, 
foreign  nations,  registration  of  trademark  used  in  commerce  with 

(sec.  1),  468. 
foreign    powers,    conventions   or   treaties    with,    and    laws    of,    as 

affecting  right   of  registration    (sees.   1,   4),  468,  471. 
former  rights  and  remedies  preserved    (sees.  12,  23),  477,  483. 
fraud   in  obtaining  registration,  bars  an  action   (sec.   21),  483. 
fraudulent: 

declaration  and  registration  damages  for   (sec.  25)',  484. 
trademarks,  damages  for  aflBxing  same  to  merchandise    (sec 
16),    480. 
geographical  terms,  not  registrable    (sec.  5),  471. 
goods,  particular  description  of,  to  be  recited    (sec.  1),  468. 
identity  with  other  trademarks  bars  registration   when    (sec.   5), 

471. 
imitation  of  registered  trademarks,  penalty  for  (sees.  16,  19),  480, 

481. 
immoral  or  scandalous  matter  not  registrable   (sec.  5),  471. 
importation   of   articles    of   merchandise   bearing   unlawful   trade- 
marks prohibited    (sec.   27),  484. 
Indian    tribes,    registration    of    trademarks    used     in    commerce 

with    (sec.  1),  468. 
infringement,  remedy  for   (sees.   16,  19),  480,   481. 


870  INDEX, 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued, 
injunction: 

action  for,  when  barred    (sees.  21,  28),  483,  485. 

against  the  wrongful  use  of  a  registered  trademark  (sec.  19), 

481. 
may  be  enforced  by  proceedings  to  punish  for  contempt  (sec. 

20),  .482. 
may  be  enforced  in  any  jurisdiction    (sec.  20),  482. 
notice  of,   may   be  served   wherever   defendant   can  be   found 
in  United  States    (sec.  20),  482. 
injurious    articles,    action    may    not    be    brought    on    trademarks 

used  on   (sec.  21),  483. 
interferences: 

examiner  in  charge  of  has  jurisdiction  over — 
cancellations     (sec.    13),    478. 
interferences    (sec.  7),  474. 
oppositions    (sec.  7),  474. 
when    declared     (sec.    7),    474. 
interfering  trademarks,  suits,  and  proceedings  in  equity  (sec.  22), 

483. 
issue  of  certificates  of  registration    (sees.   6,   11),   473,  476. 

to  assignees    (sec.  11),  476. 
jurisdiction: 

of  the  commissioner  of  patents   (sees.  8,  13),  475,  478. 
of  the  examiner  of  interferences    (sees.  7,  13),  474,  478. 
original   and  appellate,  of  the  United   States   courts    (sees.   9, 
16,   17,   18,    19,    20,    22),    475,   483. 
lawfulness  of  claim   to  trademark  to  be  decided  by  the  commis- 
sioner   (sec.    6),    473. 
lawful    trademarks,    or    those    used    lawfully,    alone    registrable 

(sec.   5),   471. 
length  of  time  of  use  of  trademark  to  be  recited    (sec.  1),  468. 
list   of  trademarks   to   be   published   in   the   Official   Gazette    (sec. 

6),  473. 
location  of  applicant  to  be  specified    (sec.   1),   468. 
merchandise  bearing  unlawful  trademarks,  importation  prohibited 

(sec.   27),  484. 
merchandise,  class  of,  to  be  recited    (sec.   1),   468. 
mistake,  or  confusion  in  the  public  mind  caused  by  similarity  of 

trademarks,  bars  registration    (sec.  5),  471. 
mode  of  affixing  trademark  to  be  recited    (sec.   1),   468. 
name  of  applicant: 

not  registrable,  except  on  certain  conditions   (sec.  5),  471. 
to  be  specified  in  the' application   (sec.  1),  468. 
notice  of  opposition  and  of  the  grounds  therefor  to  be  given  to 
applicants   (sec.  7),  474. 


INDEX.  871 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued, 
notice   of   registration: 

registrants   must  give    (sec.  28),   485. 

form  of    (sec.   28).   485. 
notice  for  foreign  applicants  may  be  served  on  their  representa- 
tives in  the  United  States    (sec.  3),  470. 
oath  to  declaration  may  be  made  before  whom   (sec.  2),  469. 
oppositions: 

may  be  made  by  any  person  who  believes  he  would  be  dam- 
aged  by   registration    (sec.    6),    473. 

must  be  accompanied  by  fee   (sec.  14),  478. 

notice  of  grounds  of  opposition  shall   be  given  to  applicants 
(sec.    7),  474. 

notice  of,  must  be  filed  within  30  days  after  publication   (sec. 
6),    473. 

notice  of,  must  be  verified    (sec.  6),  473. 

proceedings   under    (sec.    7),    474. 

publication  of  trademarks  in  Official  Gazette  before  registra- 
tion to  enable  opposition  to  be  made   (sec.  6),  473. 
"owner"  defined   (sec.  29),  486. 

ownership,  registration  to  be  prima  facie  evidence  of  (sec.  16),  480. 
penalty: 

for  false  or  fraudulent  registration    (sec.   25),  484. 

for  imitation  of  trademark   (sees.  16.  19,  20),  480,  481,  482. 
"person"  defined    (sec.   29),  486. 
petition,   to   contain   what    (sec.    1),   468. 

portraits  of  living  individuals  not  registrable   without  their  con- 
sent in  writing   (sec.  5),  471. 
printed  copies  of  specifications  to  be  kept  of  record  (sec.  11),  476. 
printed  copies  of  trademarks  to  be  furnished  by  the  Office   (sees. 

11.   14),  476,  478. 
profits   may   be  recovered    (sec.   19).   481. 

publication  of   trademarks   in   the   Official   Gazette    (sec.   6),  473. 
publications,  prices  of  copies  of   (sec.  14),  478. 
recording: 

fees  for    (sec.   14),  478. 

of   assignments    (sec.   10),   476. 
records  of  trademarks,  statements,   declarations,  etc.,   to  be  kept 

(sec.   11),   476. 
refunding  of  fees    (sec.  15),  479. 
refusal  of  an  application   (sees.  6,  7).  473,  474. 
"registrant"  defined   (sec.  29),  486. 

registrants   under  the   act   of   1881,   rights   of    (sec.   12),   477. 
registration: 

authorized  by  (sec.  1),  468. 

bars  to   (sees.  1,  2,  4,  5),  468,  469,  471. 


872  INDEX. 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued. 

by  residents  of  foreign  countries   (sees.  1,  3),  468,  470. 
certificates  of — 

duration   (sec.  12),  477. 

how  and  when  issued   (sees.  6,  11),  473,  476. 
renewal  of    (sec.   12),  477. 

use  of,  in  courts  as  evidence   (sees.  11,  16),  476,  480. 
fees  for   (sec.  14),  478. 
how    effected     (sees.    1,    2),    468,    469. 
marks   not   registrable    (sec.    5),   471. 
obtained   by   false  or  fraudulent  representation,   damages  for 

(sec.   25),  484. 
of  marks  used  10  years  prior  to  the  passage  of  this  act  (sec. 

5),  471. 
records  of,  to  be  kept    (sec.  11),  476. 
renewal  of,  can  be  made,  when  (sec.  12),  476. 
right  to — 

as  affected  by  citizenship  of  applicant  (sees.  1,  4),  468,  471. 
as    conferred   by   treaty,   or   convention   with    a   foreign 
power,  or  by  the  laws  of  a  foreign  country  (sees.  1,  4), 
468,    471. 
rules  for,  to  be  prescribed  by  the  Commissioner  (sec.  26),  484. 
to  be  prima  facie  evidence  of  ownership   (sec.  16),  480. 
use  in  foreign  or  Indian  or  interstate  commerce,  a  prerequi- 
site to    (sec.   1),  468. 
who  is  entitled  to   (sees.  1,4),  468,  471. 
regulations  and  rules  to  be  prescribed  by  the  Commissioner   (sec. 

26),   484. 
remedies  for  infringements  (sees.  16,  19,  20,  23),  480,  481,  482,483. 
renewal  of  certificate  of  registration  (sec.  12),  477. 

must  be  made  not  more  than  six  months  prior  to  expiration 

(sec.  12),  477. 
who   may   request    (sec.   12),   477. 
representatives    in    the    United    States,    foreign    applicants    must 

designate    (sec.   3),   470. 
reproduction  and  use  of  registered  trademarks,  penalty  for   (sees. 

16,  19,   20),  480,   481,  482. 
resemblances  to  other  marks  must  be  avoided    (sec.  5),  471. 
residence  of  applicants   required    (sec.   1),  468. 

restrictions: 

on  actions  for  damages  or  an  injunction   (sees.  21,  28),  483,  485. 

on  actions  for  infringement    (sees.  21,   28),  483,  485. 

on  registration  (sec.  5),  471. 
review  by  Commissioner  of  adverse  decision    (s"c.  9),  475. 
right   to   use  the   trademark  must  belong  exclusively  to   the  ap- 
plicant  (sec.   2),  469. 


INDEX.  873 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued. 

rights  at  common  law  or  equity  not  abridged  (sec.  23),  483. 
rules  and  regulations  to  be  prescribed  by  the  Commissioner   (sec. 

26),    484. 
scandalous  or  immoral   matter  not  registrable    (sec.   5),   471. 
schedule  of  fees    (sec.   14),  478. 
similarity  to  other  trademarks,  bars   registration  when    (sec.   5), 

471. 
specifications,  printed  copies  of,  to  be  kept  of  record  (sec.  11),  476. 
specimens  of  the  trademark  required    (sec.   1),   4G8. 
statement  of  applicant: 

to  recite  what    (sec.   1),   468. 
recording  of   (sec.  11),  476. 
"states,"   defined    (sec.    29),   486. 
states,    registration    of    trademarks    used    in    commerce    between 

(sec.  1),  468. 
ten  years'  use  prior  to  the  passage  of  this  act  permits  registration 

of  certain  marks    (sec.  5),  471. 
term  of  registration: 

duration   of    (sec.   12),   477. 
limitation   of    (sec.   12),  477. 
renewal  of    (sec.   12),  477. 
time  of  use  to  be  recited   (sec.  1),  468. 
"trademark"  defined   (sec.  29),  486. 

trademarks  to  be  published  in  Official  Gazette  (sec.  6),  473. 
transfers  of  the  right  of  use,  how  regulated  (sec.  10),  476. 
treasury  department,  deposit  of  trademark  in  (sec.  27),  484. 
treaties,  as  conferring  the  right  of  registration   (sees.  1,  4),  468, 

471. 
United  States: 

citizens  of,   may  obtain  registration,  when    (sec.  1).  468. 
courts   of,  to   have  jurisdiction,   when    (sees.   16,    17,   18,   19). 

480,  481. 
definition   of  the   term   "United   States"   as   used    in   this   act 
(sec.   29),  486. 
unlawful  business,  use  of  trademarks  in,  bars  an  action  (sec.  21), 
483. 

use: 

if  in  an  unlawful  business,  bars  an  action   (sec.  21),  4S3. 

if   wrongful,   common    law   and    equitable    rights   unimpaired 

(sec.  23),   483. 
length  of  time  of,   to  be  recited    (sec.  1),   468. 
mode  of,  to  be  recited    (sec.  1),  468. 

right  of,  must  be  exclusive  with  the  applicant    (sec.  2),  469. 
right  of,  transfers  of  (sec.  10),  476. 


874  INDEX. 

References  are  to  pages. 

STATUTES  (Act  of  1905)— Continued. 

unlawful,   of   trademarks,   damages   or   injunctions    (sees.   16, 
19,  20),  480,  481. 
verification  of  declaration,  how  and  by  whom  made   (sec.  2),  469. 
writ  of  certiorari,  may  be  granted  by  the  Supreme  Court  of  the 
United  States    (sec.   18),  481. 
STATUTES:     PRINTS  AND  LABELS— (ACT  OF  1874)  — 
art,   works   of,   not   registrable    (sec.   3),  424. 
commissioner:    426. 

jurisdiction   as   to   registration    (sec.    3),    424. 
to  sign  and  seal  the  copy  of  record  of  registration   (sec.  3), 
424. 
copyright  law,  application  to  registry  of  prints  and   labels    (sec. 

3),    424. 
cut,  the  word  construed  as  meaning  what    (sec.  3),  424. 
engraving,  the  word  construed  as  meaning  what  (sec.  3),  424. 
fees  for  registration    (sec.  3),  427,  436. 
fine  arts,  registry  not  allowed  to  illustrations  or  works  connected 

with    (sec.   3),   424. 
illustrations,    when    registrable    (sec.    3). 
labels,  registration  of   (sec.  3),  426. 
law  of  copyright,  application  of  to  registry  of  prints  and  labels 

(sec.   3),   426. 
Patent    Office   rules,    428. 

pictorial   illustrations,  when  registrable    (sec.  3),  125. 
print,  the  word  construed  as  meaning  what   (sec.  3),  425,  426. 
record  of  registration,  copy  of,  fee  for   (sec.  3),  436. 
registration,    provisions  as   to    (sec.   3),   424. 
works   of  art,   not   registrable    (sec.   3),   424. 

STATUTES— 

Section  3449,  R.  S.  U.  S.,  343. 

"STEEL  SHOD"    (shoes),  95. 

"STEINWAY,"   288. 

"STEPHENS,"    288. 

"STILLMAN   MILLS,"   179. 

"ST.  JAMES"   (newspaper,  etc.),  104. 

"STOCK  BELONGING  TO  THE   PARTNERSHIP"— 
includes  goodwill,   194. 

"STOCK   IN   TRADE   AND   EFFECTS"— 

goodwill  not  included  in,  193. 
"STOGA  KIP"    (boots),  95. 

"STONE    ALES"— 
case,  132,  n.  8. 


INDEX.  875 

References  are  to  pages. 
"STRAIGHT   CUT"    (cigarettes),   95. 
STRUCTURE— 

imitation  of,   255. 
"STUART'S    DYSPEPSIA   TABLETS,"    288. 
SUBMISSION— 

to   avoid    costs,    403,    405. 

must   be   complete,   403,    404. 

may  be  made  at  any  stage  of  the  case,  403. 

by  others  as  evidence  of   right   to  trademark,   396. 

offer  of  on  conditions,  iusuflBcient,  404. 
SUBPOENA   DUCES  TECUM— 

for    drawings    enforced    against   objection    they    relate    to    secret 
process,   229. 
"SUBSTITUTION"— 

defined,    276. 
"SUCCESSOR  TO"— 

right  of  purchaser  of  business  to  advertise  as,  197. 
SUITS   IN   EQUITY— 

for  invasion  of  goodwill, 

generally,   361. 
"SUNLIGHT"    (soap),  104,  289. 
SURNAME— 

not   registrable   under   Act   of   1881,    463,   n. 
"SVENSKA  SNUSMAGANISET."  95. 
"SWAN,"    289. 

"SWAN   DOWN"    (complexion   powder),   104. 
"SWEET   CAPORAL"    (cigarettes),   104. 
"SWEET    LOTOS"     (tobacco),    95. 
"SWEET  OPOPONAX  OF  MEXICO"    (perfume),  104. 
"SWING"    (scythe-sockets),   95. 
SYMBOL— 

may  be  infringed  by.  or  infringe,  a  word,   289. 

SYPHONS— 

acts  to  protect,   (See  Statutes  of  the  several  States). 
"SYRUP   OF   FIGS"    (medicinal   preparation),   121. 
"SYRUP  OF   RED   SPRUCE   GUM"    (medicine),  104. 

T 

"TAFFY    TOLU"    (chewing    gum),    95. 
TAILOR— 

goodwill  of,  188. 


<7 


876  INDEX. 

References  are  to  pages. 
"TAMAR  INDIEN"    (lozenges),   104,   115. 
TARIFF  ACT  OF  1897,  466. 
"TASTELESS"    (drugs),   S5. 
TAXATION  OF  TRADE  SECRETS,  228,  229. 
TELEGRAPH  BLANKS— 

not  merchandise  within  act  of  1881,   460,  n.  34. 
"TELEGRAPHONE,"  293. 
TENDENCY— 

to  deceive,  as  test  of  infringement,  265. 
TENNESSEE,    STATUTES,    693. 
TERM    OF    REGISTRATION,    477. 
TERRITORIAL   LIMITATION— 

none    as    applied    to    trademarks,    19. 
TESTS  OF  INFRINGEMENT,  265,  299. 
TEXAS,    STATUTES,    698. 
"THE  DEMON,"  282. 

"THE  GOOD  THINGS  OF  LIFE"   (periodical),  104. 
"THE   NILE"    (playing  cards),   104. 
THOMSONIAN    (medicines),  95. 
"THOMSON'S    GLOVE-FITTING    CORSETS,"    207. 
"TIDAL  WAVE"    (tobacco),   104. 
TIME— 

required  to  create  trademark  right,  58,  n.  15. 
"TIME-KEEPER"    (watches),  95. 
TIN  TAG — 

not  a  trademark,   243. 

fraudulent    imitation    of,    enjoined,    244. 

TITLE— 

book,  as  trademark,  162. 

former    adjudication    establishing,    conclusive   on    application   for 

preliminary  injunction,   380. 
of   periodical    as   trademark,    164. 
of  play  as  trademark,  169. 

registration   only   prima   facie    evidence   of,   372. 
should  be  pleaded,   372. 

"TIVOLI"    (beer),  104. 

"TOD"    (watches),  115. 

"TONGE'S,"  289. 

"TOOTHACHE  GUM,"  95. 

"TOWER    PALACE"    case,    179. 


t 


INDEX.  877 

References  are  to  pages. 

TRADE  LIBEL,  46. 

slander   or    libel    not   actionable    in   absence   of    proof   of   special 
damage,   47. 

TRADEMARK— 

abandonment   of,   176. 

acquisition    of,    generally,    55. 

alien   cannot   have,   as   against   a   citizen   malting   prior   adoption 

in  good   faith,   62. 
analogy    of    to   goodwill,    27. 
assignability   of,   22. 
assignment    by    implication, 
assignment    of   territorial    rights    in,    20. 
cannot   exist   "in   gross";    must   be    "appendant,"    20. 
can  only   be  assigned   with   goodwill,   27. 
casual  use  cannot  create,  21. 
counterfeiting,    260. 

courts  not  critical  of,  where  fraudulent  competition  exists,  372. 
defined,   3. 

defined  by  Act  of  1905,  486. 
dependent  on   priority  of  appropriation,   62. 
distinguished    from   patents   and   copyrights,   14. 
does  not  become  pxihlici  juris  through  extensive  sales,  108. 
earliest   recognition   of,   36. 
evolution   of   the   law   of,   40. 
function   of,   defined,  15. 

imitation   of,   may    be    limited   or   partial,   242. 
includes    the    French    marque   de   fabrique  and    marque   de   com- 
merce,  6. 
infringement    akin   to   forgery,    51. 
in    initials,    297. 

in  name  of  secret  preparation,  219. 
inseparable  from  business,  20. 
inseparable   from   goodwill,   22. 
in    title    of    book,    162. 
in  title  of  periodical,  164. 
in   title  of  play,   169. 
invalidated    by    dishonest   label,   67. 
is  an  assurance  of  quality,  105. 
letters   and   numerals   as,    295. 
may  be  a  word  in  common  use,  when,  85. 
may  be  purely   fanciful,   85. 
may  consist  of  word  from   dead  language,  114. 
may  indicate  natural  product,  84. 
may  pass  by  Implication  as  incident  to  realty.  33. 
misspelling  generic   word   does  not  make,  85. 
mode  of  affixing,   immaterial,  7. 


878  INDEX. 

References  are  to  pages. 

TRADEMAKK— Continued, 
must  be   distinctive^   7. 
must  be  exclusive,  17. 
must  be  meaningless,  71,  n.  17. 
must  be  truthful,  70. 
must  not  be  common  to  the  trade.  111. 
need  not  indicate  manufacture  or  place  of  manufacture,  15. 
none  in  name  of  patented  article  after  expiration  of  patent,  83. 
no  right  of,  in  form,  size  or  color,  112,  245. 
no  right  of,  in  necessary  name  of  product,   108. 
not  acquired  by  registration,  59. 
not  defined  by  acts  of  1870  and  1881,  450,  note. 
of  partnership,  passes  with  sale  of  goodwill,  27. 
of  variable  sound  and  pronunciation,  304. 
perpetual   existence  of,   18. 
printing  generic  word  in  letters  from  foreign  alphabet  does  not 

make,  85. 
proper  names  cannot  constitute,  84. 
remotely  descriptive  word  may  be,  8G. 
reproduction    of,    proof    of    fraudulent   intent,    256. 
requisites  of  valid,  66. 

right  acquired  only  by  adoption  and  actual  use,  20. 
right  of,  in  word   applied   to   patented   article  during  life  of  the 

patent,   82. 

where  use  of  mark  antedates  patent,  80. 
right  to,  a  common  law  right,  16. 
right  to,  a  right  of  property,  16. 
right  to,  may  be  common  to  several  owners,  51,  52. 
right  to,  must  be  exclusive,  10,  51. 
right   to,   is   not   monopoly,   49. 
right  to,  protected  in  territory  under  military  government  of  the 

United  States,  486. 
territorial    limitation,    19. 

territorial   rights   to,   cannot   be   conveyed,   17. 
the  law  of,  but  part  of  law  of  unfair  trade,   3. 
unlawful   to   apply   to   manufacturer's   product  to   which   he   does 

not  intend  its  application,  275. 
water  mark  may  be,  7. 
what  are  essential   features  of,  451,  n.  13. 

words  and  devices  common  to  the  trade  cannot  be,  106,  107,  111. 
words  of  double  meaning  as,  159. 

TRADEMARK   RULES   OF  PATENT   OFFICE— 
abandoned   trademarks    (rule   18),   493. 
act  of  1881,  rights  of  registrants  under   (rule  55),  504. 
action  of  the  Office  to  be  directed  to  the  merits   (rule  37),  500. 
additions  to  papers  not  permitted   (rule  40),  501. 


INDEX.  879 

References  are  to  pages. 

TRADEMARK  RULES  OF  PATENT  OFFICE— Continued. 

advertising  stamp  of  attorneys  not  permitted  on  drawings   (rule 

34,  —6),  498. 
allowance: 

amendments  after    (rule  42),   501. 
notice  of    (rule  38),  500. 
amendments: 

after   allowance    (rule   42),    501. 

form    of    (rule    40),    501. 

in  general   (rules  39,  40,  41,  42,  43),  501. 

new  matter  not  permitted  in   (rule  39),  501. 

to  amendment,  form  of   (rule  41),  501. 

to  applications  filed  under  act  of  1881   (rule  25),  495. 

will  give  such  applications  new  serial  numbers  and  dates 
of  filing  (rule  25),  495. 
to  declaration,  will  not  be  permitted    (rule  33),  498. 
to  rules,  will  be  published  in  the  Official  Gazette   (rule  68), 

508. 
to   statement,   when   permitted    (rule   39),    501. 
appeals: 

to  the  Commissioner  of  Patents    (rule  50),  503. 
to  the  court  of  appeals  of  the  District  of  Columbia  (rule  51), 
503. 
applicant: 

may  prosecute  his  own  case    (rule  11),  489. 
should  not  correspond  with  OflBce  if  he  has  an  attorney  (rules 
7,  8),  489. 
applications: 

are  preserved  in  secrecy  (rule  24),  495. 
conflicting,  practice,  etc.  (rule  44),  502. 
date  of,  in  foreign  country,  must  be  stated,  when    (rule  31), 

498. 
examination  of    (rules  36,   37,   38),  500. 
fee  on  filing  (rules  21.  if).  63),  494,  506. 
filed  under  act  of  1881  may  be  amended   (rule  25),  495. 

will   be  given  new    serial     numbers   and   dates  of  filing 
under  the  act  of  Feb.  20.  1905   (rule  25).  495. 
may  be  assigned    (rule  57),  505. 
to  contain  what,  form  of  (rule  21),  494. 

assignments: 

fees  for  recording  (rule  63),  506. 

must  be  recorded  within  three  months    (rule  58),  505. 

orders  for  copies  of,  must  give  liber  and  page  of  record   (rule 
61).  506. 

provisions  regulating   (rules  57,  58.  59),  505. 
attendance  of  applicants  in  person  not  necessary   (rule  6),  489 


880  INDEX. 

References  are  to  pages. 

TBADEMAKK  KULES  OF  PATENT  OFFICE— Continued, 
attorneys: 

correspondence    will    be    held    with    (rule    7),    489. 

disbarment  of    (rule  15),  492. 

in  general    (rules  11,  12,  13,  14,  15),  489,  492. 

registration  of    (rule  11),  489. 

stamp  of,  not  permitted  on  face  of  the  drawing  (rule  34,  — 7), 
498. 

substitution  of   (rule  13),  492. 
bars  to  registration   (rules  17,  18),  492,  493. 
cancellation,  proceedings  for  (rules  28,  47,  48,  49),  496,  502,  503. 
certificate  of  registration: 

date  of    (rule  53),  504. 

duration  of    (rule  53),  504. 

issue  of   (rules  52,  53),  504. 

issued  under  act  of  1881  shall  remain  in  force  (rule  55),  504. 
may  be  renewed  under  act  of  Feb.  20,  1905  (rule  55),  504. 

may  be  issued  to  an  assignee   (rule  59),  505. 

may  be  canceled   (rule  46),  502. 

renewal  of    (rule  54),  504. 

will   not  be  issued   to  foreign  applicants  until  they  have  ob' 
tained   registration  in  country  of  residence    (rule  56),  505. 
charges  for  express,  postage,  etc.,  must  be  prepaid   (rule  10),  489. 
citizenship: 

as  affecting  right  to  register    (rule  16),  492. 

of  applicant  to  be  recited   (rule  21,  — b),  494. 
class  of  merchandise  to  be  recited  in  application  (rule  21,  — 6),  494. 
coats  of  arms  not  registrable    (rule  18),  493. 
commerce: 

between  States   (rule  18),  493. 

foreign  applicants  need  not  state  that  the  trademark  has 
been  used  in  commerce  with  the  United  States  or  among 
the   States  thereof    (rule  31),  498. 

with  foreign  nations    (rule  18),  493. 

with  Indian  tribes    (rule  18),  493. 
commissioner: 

appeals  to    (rule  50),  503. 

communications  to  be  addressed  to   (rule  3),  488. 
communications.     (See  Correspondence.) 
conflicting   applications,   interferences,   patent   practice   to   govern 

in    (rule  44),  502. 
copies  of  actual  trademark  required  from  applicant  (rule  21,  — e), 

494. 
copies  of  publications,  prices  of    (rule  63),  506. 
corporations  must  recite  under  the  laws  of  what  State  or  nation 
incorporated    (rule  21,  — 6),   494. 


INDEX.  _  881 

References  are  to  pages. 

TRADEMARK  RULES  OF  PATENT  OITICE— Continued, 
correspondence: 

charges  for  postage,  etc.,  must  be  prepaid    (rule  10),  489. 
checks,   drafts,   etc.,   to   be   drawn   to   the   Commissioner's   or- 
der (rule  3),  488. 
decorum  and  courtesy  required    (rule  2),  488. 
double  correspondence  not  permitted    (rule  8),  489. 
letters  relating  to  application  should  state  what  (rule  5),  489. 
office  can  not  expound  the  law,  etc.   (rule  9),  489. 
personal  attendance  unnecessary    (rule   6),   489. 
separate  letter  for  each  subject  of  inquiry  required    (rule  4), 

488. 
will   be  held  with  the  attorney    (rule  7),  489. 
courtesy    and    decorum    required     of    applicants    and    attorneys 

(rule  2).  488. 
date  of  certificate  of  registration   (rule  53),  504. 
deceptive  trademarks  not  registrable   (rule  18),  493. 
declaration: 

in  general   (rules  29,  30,  31,  32,  33),  497.  498. 
may  not  be  amended    (rule  33),  498. 
requisites  of    (rules  29,  30,  31),  497,  498. 
for  foreign  applicants    (rule  31),  498. 
under  10-year  section    (rule  30),  497. 
to  be  verified  before  whom    (rule  32),  498. 
decorum  required  from  applicants  and  attorneys   (rule  2),  488. 
description  of  the  trademark  required  (see  Statute),  (rule  21, — ft), 

494. 
descriptive  marks  not  registrable    (rule  18),  493. 
disbarment  of  attorneys    (rule  15),  492. 
domicile  to  be  recited  (see  Statute),  (rule  21.  — b),  494. 
double  correspondence  not  allowed    (rule  8),  489. 
drawing: 

furnished  by  the  Office    (rule  35),  500. 
must  not  be  folded    (rule  34,  —6),  498. 
requisites  of    (rule  34),  498. 
duration  of  term  of  registration    (rule  53).  504. 
English   language  to  be   used   in  the   application   papers   and   as- 
signments  (rules  22,  57),  495,  505. 
erasures  by  applicant  or  attorney  not  permitted   (rule  40),  501. 

examination: 

applicants  will  be  notified  of  the  result  of   (rule  36).  500. 
of  applications    (rules  36.  37.  38).  500. 

of  applications  for  registration  of  trademarks  previously  reg- 
istered under  act  of  1881   (rule  25).  495. 
examiner   in   charge  of  trademarks,   original   jurisdiction  of.   pro- 
ceedings before    (rule  36),  500. 

\  f 


882  INDEX. 

References  are  to  pages. 

TKADEMAEK  EULES  OF  PATENT  OFFICE— Continued, 
express  charges  must  be  prepaid    (rule  10),  489. 
fac-simile  of  trademarlv,  wlien  to  be  filed    (rule  21,  — e),  494. 
fees: 

additional   fee   not  required    for   applications   pending   at   the 
date  of  the  passage  of  act  of  February  20,  1905   (rule  25), 
495. 
how  paid    (rules  3.  64,  65),  488,  507. 
refunded,  when    (rule  66),  507. 
schedule  of   (rule  63),  506. 
flags  or  coats  of  arms  not  registrable   (rule  18),  493. 
foreigners: 

entitled    to    date    of   application    in   country    of   residence    in 

certain  cases   (rule  26),  496. 
must  designate  representative  in  United  States   (rule  27),  496. 
must  first  register  in  country  of  residence   (rule  56),  505. 
must    give    date    of    registration    in    country    of    residence    or 

date  of  application  therefor    (rule  31),  498. 
must  reside  in  a  country  affording  similar  privileges  to  the 

citizens  of  the  United  States   (rule  18),  493. 
need  not  state  that  mark  has  been  used   in   commerce  with 
the  United   States  or  among  the   States  thereof    (rule  17), 
492. 
notices    for,    may   be   served   on   their   representatives   in   the 

United  States   (rule  28),  497. 
when  entitled  to  register    (rule  17),  492. 
foreign  nations,  registration    of    trademarks    used    in    commerce 

with    (rule  18),  493. 
geographical  terms  not  registrable    (rule  18),  493. 
goods,    particular    description    of,    to    be    recited     (see    Statute), 

(rule  21,  —6),  494. 
immoral  or  scandalous  matter  not  registrable    (rule  18),  493. 
Indian  tribes,  registration  of  trademarks  used  in  commerce  with 

(rule  18),  493. 
information  of  certain  kinds  not  furnished   (rules  9,  24),  489,  495. 
injurious  articles,  trademarks  used  on,  not  registrable   (rule  18), 

493. 
insertions  by  applicants  or  attorneys  not  permitted  (rule  40),  501. 
interferences: 

examiner  in  charge  of,  has  jurisdiction  over — 
cancellations    (rules  46,  48),  502,  503. 
interferences    (rule  44),  502. 
oppositions   (rules  45,  48),  502,  503. 
when  declared,  practice  (rule  44),  502. 
Issue  of  certificates  of  registration   (rules  52,  53),  504. 
to  assignee   (rule  59),  505. 


INDEX.  883 

References  are  to  pages. 

TBADEMAEK   RULES   OF   PATENT   OFFICE— Continued. 

lawful    trademark.s,    or    those    used     lawfully,    alone    registrable 

(rule  lH),  493. 
length  of  time  used  to  be  recited  (see  Statute),  (rule  21,  — 6),  494. 
letters,  rules  and  regulations  governing   (see  Correspondence), 
list  of   trademarks   to    be   published   in   the   Official   Gazette    (rule 

62),  506. 
merchandise,  class  of,  to  be  recited  (see  Statute),  (rule  21, — i»),494. 
merits.  Office  action  to  be  directed  to  the   (rule  37),  500. 
mode  of  applying  and  affixing  trademark  to  the  goods  to  be  re- 
cited   (see  Statute),    (rule  21,  — b),  494. 
mutilation  of  papers  not  permitted   (rule  40),  501. 
name   of   applicant   not    registrable,   except   under   certain    condi- 
tions   (rule  18),  493. 
name  of  applicant  to  be  recited   (see  Statute),  (rule  21,  — b),  494. 
new  matter  not  permitted  by  amendment   (rule  39),  501. 
notice  of  allowance    (rule  38),  500. 
notice  of  opposition  and  of  the  grounds  t^^erefor  to  be  given  to 

applicants    (rule  48),  503. 
notice  of  registration: 

form  of  (rule  67),  508. 
registrants  must  give   (rule  67),  508. 
notices  for  foreign  applicants  may  be  served  on  their  representa- 
tives in  the  United  States   (rule  28),  497. 
oath,  to  be  made  before  whom   (rule  32),  498. 
oppositions: 

may  be  made  by  any  person  who  believes  he  would  be  dam- 
aged by  registration   (rule  45),  502. 
must  be  accompanied  by  fee   (rule  45),  502. 
notice  of  grounds  of  opposition  shall  be  given  to  applicants 

(rule  48),  503. 
notice  of,  must  be  filed  within  30  days  after  publication  (rule 

45),  502. 
notice  of,  must  be  verified   (rule  45),  502. 
proceedings  under   (rules  45,  48,  49),  502,  503. 
orders  for  copies,  to  specify  what  (rule  61),  506. 
personal   attendance  of  applicants  unnecessary    (rule  6),   489. 
petition  to  contain  what   (rule  21,  — a),  494. 

portraits  of  living  individuals  not  registrable  without  their  con- 
sent in  writing   (rule  18),  493. 
postage  must  be  prepaid   (rule  10),  489. 
powers  of  attorney: 

filing  of    (rule  12),  491. 
requisites  of   (rule  12),  491. 
revocation  of   (rule  14),  492. 


884  INDEX. 

References  are  to  pages. 

TBADEMAEK  RULES  OF  PATENT  OFFICE— Continued. 

printed   copies  of  trademarks   furnished   by  the  OflSce    (rule   60), 

506. 
priority  proceedings,  patent  practice  to   govern    (rule  44),  502. 
publication  in  the  Official  Gazette: 

of  registered  trademarks   (rule  62),  506. 

of  trademarks  before  registration   (rule  38),  500. 
publications,  prices  of  copies  of  (rule  63),  506. 
recording  assignments    (rules  57,  58),  505. 

fees  for   (rule  63),  506. 
refunding  of  fees   (rule  66),  507. 

refusal  of  an  application.  Office  proceedings   (rules  36,  37),  500. 
registrants  under  act  of  1881,  rights  of   (rule  55),  504. 
registration: 

barred  when    (rules  17,  18,  56),  492,  493,  505. 

certificate  of,  date,  duration,  etc.    (rule  53),  504. 

of  attorneys   (rule  11),  489. 

of   marks   used    ten   years   prior   to   the   act   of   Feb.    20,    1905 
(rule  19),  494. 

of  particular  trademarks.  Office  can  not  advise  as  to  (rules  9, 
24),  489,  495. 

renewal  of   (rule  54),  504. 

who  is  entitled  to   (rules  16,  17),  492. 
remittances,  how  made   (rules  3,  64,  65),  488,  507. 
renewal  of  certificates  of  registration    (rule  54),  504. 
repayment  of  money,  when  made   (rule  66),  507. 
representatives    in    the   United    States,   foreign    applicants     must 

designate  (rule  27),  496. 
residence  of  applicants  required  (see  Statute),  (rule  21,  — &),  494. 
restrictions  on  registration  (rules  17,  18),  492,  493. 
return  of  papers  lacking  in  courtesy  and  decorum    (rule  2),  488. 
return  of  application  papers  not  allowed    (rule  43),  501. 
review  by  Commissioner  of  adverse  decision   (rule  50),  503. 
scandalous  or  immoral  matter  not  registrable    (rule  18),  493. 
schedule  of  fees   (rule  63),  506. 
secrecy,  applications  preserved  in   (rule  24),  495. 
separate  letters,  when  required   (rules  4,  40),  488,  501. 
signatures  of  applicant  must  be  uniform   (rule  23),  495. 
specimens  of  the  trademark  required  (rule  21,  — e),  494. 
statement: 

may  be  amended   (rule  39),  501. 

must  recite  what   (rule  21.  — 6),  494. 
state,  registration  of  trademarks  used  in  commerce  among   (rule 

18),  493. 
substitute  declaration,  when  required   (rule  33),  498. 
substitution  of  attorneys    (rule  13),   492. 


INDEX.  885 

References  are  to  pages. 

TRADEMARK  RULES  OF  PATENT  OFFICE— Continued. 

ten  years'  use  prior  to  act  of  Feb.  20,  1905,  permits  registration 
of  certain  marks   (rule  19),  494. 

term  of  registration: 

duration  of   (rules  53,  55),  504. 
renewal  of  (rules  54,  55),  504. 

transfer  of  trademark   rights    (see  also  Assignments),    (rule  57), 
505. 

unlawful  business,  trademarks  used  in,  not  registrable   (rule  18), 
493. 

use: 

manner,  or  mode  of,  to  be  recited    (rule  21,  — h),  494. 
time  of.  to  be  recited  (see  Statute),  (rule  21,  — b),  494. 

verification  of  declaration   (rule  32),  498. 

weekly  issue  to  close  on  Thursday   (rule  53),  504. 

writing,  business  to  be  transacted  in   (rule  1),  488. 
TRADE  NAMES— 

defined,  7. 

generally,   7. 
TRADE  SECRET— 

as  subject  of  levy  and  sale,  and  taxation,  228,  229. 

conveyed  with  goodwill,  222. 

defined,  219. 

may  be  subject  of  expired  patent,  227. 

must  be  unknown  to  others,   226. 

privilege  of  witness  from  disclosure,  221,  229. 

subject  to  levy  and  sale,  228. 

subject  to  taxation,  229. 
TRADE    SLANDER,   46. 
TRADES  UNION— 

label  of,  as  trademark,  56. 
"TRAFFORD."  289. 
TREATY— 

defined,  449,  n.  6. 

-making  power  of  congress,  basis  of  act  of  1881,  316. 
TREATIES   AND   CONVENTIONS— 

as  conferring  right  to  registration,  468,  471. 

judicial   notice   taken   of,   391. 

with  foreign  nations,  enumerated,  807. 
"TRENTON,"  455,  n.  24. 
"TRILBY"    (gloves).  104. 

TRUSTEE— 

duty  of,  to  protect  title  to  trademark.  334. 

in  bankruptcy  has  title  to  bankrupt's  trademarks,  26,  n.  63. 


886  INDEX. 

References  are  to  pages. 
TRUSTS— 

concerning  titles  to  trademarks,  334. 
TRUTH— 

indispensable  to  valid  mark,  66. 
"TUCKER  SPRING"    (bed),  95. 
"TWIN  BROTHERS"   (yeast),  104. 
"TYCOON"  (tea),  95. 

u 

ULTIMATE  CONSUMER— 

probable  deception  of,  as  test  of  infringement,  268. 
"UNEEDA"    (biscuit),  10,  104,  289. 
UNFAIR  COMPETITION    (see  Infringement,  and  Jurisdiction)  — 

between  vendor  and  vendee  of  goodwill,  197. 

bill  in  equity  to  enjoin,  366,  n.  19. 

by  improper  use  of  proper  name,  restrained,  42. 

distinguished  from  trademark  infringement,  41. 

generic  words  protected  against,  40. 

in  what  it  consists,  1. 

law  of,  includes  law  of  trademarks,  2,  3. 

law  of,  is  well  settled,  35,  n.  7. 

relief  against,  based  on  fraud  against  the  plaintiff  and  the  pub- 
lic,  41. 
UNION  LABELS— 

and  other  marks  of  trades  unions,  419,  447. 

as  trademarks,   56. 

infringement  of,  enjoined  because  unfair  competiticn,  56,  n.  6. 
"UNION  METALLIC  CARTRIDGE  CO,"  456. 
"UNION  STATION"    (cigars),  264. 

"UNITED  STATES"    (dental  rooms),  95.  * 

"UNIVERSAL,"  289. 
UNWARY— 

deception  of,  as  test  of  infringement,  265. 

USER— 

a  prerequisite  to  acquiring  trademark,  20. 

casual,  insuflBcient  to  create  trademark  right,  21. 

character  of,  necessary,  20,  58. 

held   immaterial   under  act  of  1870,   57. 

must  be  shown  to  secure  registration,  453,  n.  16. 

after   application   filed,   may  be   shown   by   supplemental   petition 

453,  n.  16. 
must  be  actual,  64. 
must  be  upon  goods  actually  upon  the  market,  64. 


IXDEX.  887 

References  are  to  pages. 

USER— Continued. 

originally    unlawful,     not     cured     by     abandonment    of    mark    by 
owner,  64. 

single  instance  of,  sufficient  to  establish  right  to  trademark,  65. 

of  trademark,  limited   to  indicating  origin  and  ownership,  65. 
UTAH  STATUTES,  701. 

V 

VALUATION  OF  GOODWILL,  204. 
VALUE  OF  TRADEMARK— 

should  be  pleaded   in  federal  practice,  350. 
"VALVOLINE"    (lubricating  oil),   95,   105. 
"VELVA,"  293. 
VENUE— 

how  laid  in  action  at  law,  349. 
VERIFICATION— 

of  bill  in  equity,  367. 
VERMONT  STATUTES  AND  FORMS,  703,  706. 
"VICHY"    (mineral  water),  291. 
..VICTORIA"    (lozenges),  95. 
"VIENNA"   (bread).  135. 
"VITAE-ORE,"   95,   289. 
"VIASCOPE"    (machine),  105. 
VIRGINIA   STATUTES  AND   FORMS,   708,   712. 
"V-0"    (medicine),  95. 
VOLUNTARY  ASSOCIATION— 

registration   for  mark  used  by,  refused,  419,  447. 
"VULCAN"    (matches),  105. 

w 

WAIVER— 

always  question  of   fact,   174. 

none  without  knowledge  of  facts,  174. 
"WALTHAM"   (watches),  8.  130,  n.  6. 
"WAMSUTTA"    (muslin),  269,  289. 
WAREHOUSEMAN— 

submission  of.  to  avoid  costs,  405. 
"WARREN,"  289. 
WASHINGTON    STATUTES,   713. 
WATER-MARK— 

may  be  a  trademark,  7. 


888  INDEX. 

References  are  to  pages. 
"WATER  OF  AYR"    (stone),  95. 
"WAVERLY"    (bicycles),  105. 
"WEBER"    (pianos),  291. 
"WEBSTER'S    DICTIONARY,"   95. 
"WELCOME"    (soap),  289. 
WEST  VIRGINIA   STATUTES,  717. 
WHARFINGERS— 

handling  infringing  goods,  given  lien   for  charges,  338. 

lien  of,  upon  infringing  goods,  339. 
"WHIRLING  SPRAY"    (syringes),  95. 
"WILLOUGHBY  LAKE"    (scythe-stones),   105,  289. 
WISCONSIN  STATUTES,  722. 

"WISTAR'S  BALSAM  OF  WILD  CHERRY,"  95,  105. 
WITNESS— 

privilege  as  to  disclosure  of  secret  process,  229. 
"WONDERFUL  MAGAZINE"  CASE,  164. 
"WORCESTERSHIRE"   (sauce),  95. 
WORD— 

may  be  infringed  by,  or  infringe,  a  symbol,  289. 

of  double  meaning,  159. 
WRIT  OF  INJUNCTION— 

form  of,  791. 
WYOMING  STATUTES,   726. 

Y 

"YALE"    (locks),  96. 
"YAMA-MAI,"  291. 
"YANKEE"    (soap),  105. 
"YUCATAN"   (leather),  96. 
"YUSEA,"  289,  305. 


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